Robertshaw Controls Company v Actrol Industries Limited Summary

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Patent Application No 516290 in the name of ROBERTSHAW CONTROLS COMPANY and Opposition thereto by ACTROL INDUSTRIES LIMITED.

Background

The history of this action is as follows:

. The Office advertised the acceptance of application no. 516290 on 28 May 1981;

. Actrol Industries Pty Ltd lodged notice of opposition under s.59 on 27 August 1981. The opposition was heard, and a decision issued by a delegate of the Commissioner on 4 November 1983 which allowed the applicant 60 days in which to propose amendments to remove grounds of objection under s.40 and s.48.

. Robertshaw filed a request under s.77 of the Act, on 7 December 1983.

. The Office advertised that request on 27 September 1984.

. Actrol filed notice of opposition to that request, on 20 December 1984. This opposition was heard and a decision issued on 25 March 1986 refusing the s.77 in its entirety, but allowing Robertshaw 30 days to seek leave to amend the complete specification.

. Robertshaw lodged a second s.77 request on 17 April 1986.

. The Office advertised this second request on 19 June 1986.

. G.S.A. Industries Limited filed notice of opposition under s.82 on 17 September 1986.

. This second s.82 opposition was heard in Canberra on 26 June 1990 and a decision by a delegate of the Commissioner, finding that the proposed amendments were allowable, was issued on 4 December 1990.

. The Commissioner was served, on 1 February 1991, with a copy of a notice of appeal filed by G.S.A. Industries Limited in the Federal Court on 21 December 1990.

. The Commissioner was notified of the withdrawal of the appeal to the Federal Court on 10 April 1991;

. The parties were advised on 23 May 1991 that opposition proceedings would re-commence and advice sought as to whether they wished to be further heard before a final decision was issued;

. Advice was received from the applicant that they did not wish to be further heard. No advice was received from the opponents.

I am therefore in a position to finalize the opposition.

Decision

I am satisfied that the amendments to the complete specification, which were advertised on 19 June 1986, remove the grounds of opposition found in the decision of 4 November 1983. Since there are no outstanding matters, I direct that the application and complete specification, as amended by those amendments, proceed to sealing.

(D. HERALD)

Assistant Commissioner of Patents

Attorneys for the Applicant: Callinan Lawrie
Attorneys for the Opponent : Phillips Ormonde & Fitzpatrick

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application       :   No. 516290 in the name of ROBERTSHAW CONTROLS COMPANY
Title:   Non-Clogging Temperature and Pressure Relief Valve
Action:   Final decision
Decision          :   Issued             . Direction to proceed to sealing

CALLINAN LAWRIE
KEW VIC 3101

RE: Patent application No 516290 in the name of
ROBERTSHAW CONTROLS COMPANY

and

Opposition thereto by ACTROL INDUSTRIES PTY LTD

Your ref: 481/1105/CM/YR

Gentlemen,

Please find attached a copy of the Decision of a Delegate of the Commissioner in the above matter.

Senior Clerk, Patents.

PHILLIPS ORMONDE & FITZPATRICK
MELBOURNE VIC 3000

RE: Patent application No 516290 in the name of
ROBERTSHAW CONTROLS COMPANY

and

Opposition thereto by ACTROL INDUSTRIES PTY LTD

Your ref: -

Gentlemen,

Please find attached a copy of the Decision of a Delegate of the Commissioner in the above matter.

Senior Clerk, Patents.

The decision in Robertshaw Controls Company v Actrol Industries Limited involved a patent application, No. 516290, submitted by Robertshaw Controls Company and opposed by Actrol Industries. The dispute centred around the validity and scope of the patent application for a non-clogging temperature and pressure relief valve. The case was heard and decided by a delegate of the Commissioner of Patents under the Patents Act 1990.

The primary legal issues addressed in the case were whether the patent application met the statutory requirements under sections 40 and 48 of the Patents Act 1990, and whether any proposed amendments sufficiently addressed the objections raised. Specifically, the court had to determine if the application and its amendments complied with the patentability criteria, including novelty and inventiveness, and whether any objections raised by Actrol Industries were valid and warranted refusal of the patent.

In the decision, the delegate found that the amendments to the complete specification, as proposed and advertised on 19 June 1986, effectively addressed the objections raised in the initial decision of 4 November 1983. The delegate concluded that the amended application satisfied the statutory requirements for patentability and, thus, the application and complete specification, as amended, should proceed to sealing. The decision also noted that no further objections were received from the opponents, which solidified the delegate's position.

The final orders were that the patent application No. 516290, in the name of Robertshaw Controls Company, as amended, would proceed to sealing. The parties involved, Robertshaw Controls Company and Actrol Industries, were notified of this decision, and the application was directed to proceed accordingly.

Robertshaw Controls Company v Actrol Industries Limited

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established