RTI Pty Ltd v Scantech International Pty Ltd - [2014] APO 58

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…

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: [2014] APO 58
Decision Date: 7 August 2014

CaseChat Overview and Summary

RTI Pty Ltd opposed the grant of a patent by Scantech International Pty Ltd. The opposition was filed before the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) commenced, which introduced significant changes to the Patents Regulations as they apply to patent oppositions. RTI sought to amend the statement of grounds and particulars of its opposition, which Scantech opposed. The court had to determine whether the amendment changed the ground of opposition and, if not, whether it was allowable.

The court held that the amendment did not change the ground of opposition from "lack of inventive step" to "lack of innovative step." The inconsistency in the statement of grounds and particulars was resolved by considering the context in which the ground was raised. The particulars related to inventive step and innovative step, which are similar concepts, but lack of innovative step is a ground of opposition for innovation patents, whereas lack of inventive step is a ground of opposition for standard patents. The present case involved an application for a standard patent, so there is only one reasonable way to resolve the ambiguity—the statement was raising the ground of lack of inventive step and not the ground of lack of innovative step. Therefore, the amendment resolved the inconsistency in the same way as it is resolved by following the principles of construction. Since the amendment did not change the ground of opposition, 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.

The court allowed the amendment of the statement of grounds and particulars and awarded costs against Scantech International Pty Ltd. The opposition fails.

Orders