RTI Pty Ltd v Scantech International Pty Ltd
[2014] APO 58
•7 August 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
RTI Pty Ltd v Scantech International Pty Ltd [2014] APO 58
Patent Application: 2006220232
Title:On-belt analyser system
Patent Applicant: Scantech International Pty Ltd
Opponent: RTI Pty Ltd
Delegate: Dr S.D. Barker
Decision Date: 7 August 2014
Hearing Date: Written submissions completed on 7 May 2014
Catchwords: PATENTS – amendment of statement of grounds and particulars – construction of grounds – inconsistency in statements of Ground 2 resolved by considering context – amendment does not change Ground 2 – amendment allowed
Representation: Patent applicant: Davies Collison Cave
Opponent:Fisher Adams Kelly
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006220232
Title:On-belt analyser system
Patent Applicant: Scantech International Pty Ltd
Date of Decision: 7 August 2014
DECISION
The opposition fails.
I allow the amendment of the statement of grounds and particulars.
I award costs against Scantech International Pty Ltd.
REASONS FOR DECISION
Patent application 2006220232 was filed by Scantech International Pty Ltd (Scantech). RTI Pty Ltd (RTI) filed a notice of opposition to the grant of a patent. Evidence in the opposition has been completed.
On 20 March 2014 RTI filed an amendment of the statement of grounds and particulars. Scantech objected to the amendment, and a hearing was conducted on the basis of written submissions.
The amendment
The amendment makes a number of changes to the particulars of the grounds. There is also an amendment of Ground 2, which is the issue in this matter.
Ground 2 is listed at the start of the statement as:
"Ground 2: Section 59(b)
The specification filed in respect of the Opposed Patent does not comply with paragraph 18(1)(b)(ii) of the Patents Act 1990"In a later portion of the statement headed "Particulars" the ground is restated as:
"Ground 2: Lack of an Innovative Step"
The amendment seeks to amend this text to read:
"Ground 2: Lack of an Inventive Step"
The law
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced. The Amendment Regulation significantly amended the Patents Regulations (the Regulations) as they apply to patent oppositions. These amendments do not apply to the present matter because the opposition was commenced before 15 April 2013. The relevant provision is regulation 5.9 of the Regulations as in force immediately prior to 15 April 2013. Subregulation 5.9(1) says:
(1) Subject to subregulation (2), the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:
(a) if the Commissioner reasonably believes that an amendment of a statement referred to in regulation 5.4 corrects an error or omission by the opponent or by his or her agent – may amend the grounds of opposition set out in the statement; or
(b)if the Commissioner reasonably believes that an amendment of the grounds set out in a statement that is served and filed under regulation 5.4 results from an amendment of a patent request or complete specification – must amend those grounds; or
(c) must amend particulars relating to a ground set out in a statement that is served and filed under regulation 5.4.
Consideration
The first issue is what is Ground 2 in the statement before amendment, and is the ground amended as a consequence of the amendment. If the ground is amended, then it is necessary to consider whether the amendment "corrects an error or omission".
What is Ground 2 in the Statement before Amendment?
The statement as filed refers initially to Ground 2 as "paragraph 18(1)(b)(ii)". This paragraph relates to inventive step. The second statement of Ground 2 says "Lack of an Innovative Step". There is a clear inconsistency on the face of the document. Where there are deficiencies in a filed document, the Commissioner should always attempt to construe the document in accordance with well established principles of construction. The task is to discern (if possible) the real intention of the document, despite its inadequacies (for instance, see my discussion in Commonwealth Scientific and Industrial Research Organisation v H.B.H. Technological Industries P/L [1992] APO 9; 24 IPR 90). One of the most important principles of construction is construction in context.
The particulars that appear immediately following the second statement of Ground 2 provide context to the ground. The particulars read, in part:
"The alleged invention as claimed in any one of claims 1 to 19 of the Opposed Application is not a patentable invention pursuant to Section 18(1)(b)(ii) of the Patents Act 1990 in that the alleged invention defined by each claim would, to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of each claim, vary from the information particularized below, only in ways that make no substantial contribution to the working of the invention."
These particulars relate to inventive step (due to a reference to section 18(1)(b)(ii)) and also to innovative step (due to the reference to "substantial contribution to the working of the invention"). This provides no clarification of the meaning of Ground 2.
A reader would know that inventive step and innovative step are similar concepts, but lack of innovative step is a ground of opposition of innovation patents, whereas lack of inventive step is a ground of opposition to standard patents. Consequently a reader could readily determine which ground of opposition was applicable (and which was inapplicable) by reference to the context of the type of patent involved. The present case involves an application for a standard patent, so there is only one reasonable way to resolve the ambiguity – the statement is raising the ground of lack of inventive step and not the ground of lack of innovative step.
Thus, despite its inadequacy, the statement of grounds and particulars as filed notifies an intention to rely upon lack of inventive step as a ground of opposition.
Does the amendment amend Ground 2?
The amendment resolves the inconsistency in the document in the same way as it is resolved by following the principles of construction. It follows that the amendment changes the words, but does not change the ground of opposition.
Is the amendment allowable?
Since the amendment does not change Ground 2 (or any other ground), paragraphs (a) and (b) of regulation 5.9(1) do not apply. There are a number of amendments to the particulars of various grounds. Regulation 5.9(1) provides no basis to reject such amendments. The amendments are allowable.
Costs
It is normal for costs to follow the event. In this case the opposition to the amendment fails, and I can see no reason to depart from the normal outcome.
Dr S.D. Barker
Delegate of the Commissioner of Patents
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