Sandvik Aktiebolag v. Boart International Limited

In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application No. 542437 by SANDVIK AKTIEBOLAG - and In the Matter of Opposition thereto under Section 59 by BOART INTERNATIONAL LIMITED.

FINAL DECISION OF A SUPERVISING EXAMINER OF PATENTS:

In my decision in this matter dated 13 January, 1987, I was unable to find whether the claims in suit could be afforded a priority date which is the same date as the lodgement date of US application 081785, because that application is a continuation-in- part of US application 854752. The latter application was lodged more than twelve months before the lodgement date of application 542437. As there was no copy of US application 854752 on file, I directed the applicant to lodge a certified copy of this application within 90 days.

On 10 February, 1987, the opponent in this matter filed an appeal against the decision in the Supreme Court of South Australia. This appeal has subsequently been withdrawn and consequently the matter can now proceed before the Patent Office.

The applicant lodged a certified copy of US application 854752 on 10 April, 1987. On a study of this application I consider that the subject matter therein is substantially the same as that in German OS 2752544. Therefore, my remarks in the decision of 13 January, 1987 regarding the German OS equally apply to US application 854752 and the latter is not relevant for the purposes of sub-section 141(2). Consequently, I can now say that the claims in suit should be afforded a priority date of 4 October, 1979, i.e. the date of lodgement of US application 081785.

As German OS 2752544 was open to public inspection in Australia on 1 November, 1979, I conclude that it does not anticipate the claims in suit. As the grounds of opposition relied upon have not been established, I find that the opposition fails.

At this point I note that the present application lapsed on 11 November, 1987 under sub-section 47D(l). However, I stated in my previous decision that costs in relation to this matter would be considered after I had determined the relevance of US application 854752. So, notwithstanding the fact that the present application has lapsed, the matter of costs can now be decided. As I have concluded above that the grounds of opposition have not been established, I direct that costs be awarded against the opponent.

(J L Roveta)Supervising Examiner

3 JUN 1988

Patent Attorneys for the Applicant: Clement Hack & Co. Patent Attorneys for the Opponent : Collison & Co.

CaseChat Overview and Summary

Sandvik Aktiebolag, the applicant, and Boart International Limited, the opponent, were engaged in a dispute concerning the patent application numbered 542437, filed by Sandvik. Boart International had opposed the application, arguing that it lacked novelty and was obvious in light of prior art. The matter was brought before the court to determine the validity of the opposition and the appropriate priority date for the patent claims. The court was tasked with deciding whether the claims in Sandvik’s application could be granted a priority date that aligned with the filing date of a related United States application and whether this date was indeed prior to the disclosure of relevant prior art. Additionally, the court needed to ascertain whether the opposition grounds presented by Boart International were valid and if the application should lapse due to non-payment of fees.

The court examined the relationship between the patent applications and the priority date issue, considering the continuation-in-part nature of one of the U.S. applications. It was determined that the U.S. application in question was not relevant for establishing the priority date under the relevant provisions of the Patents Act 1952. Consequently, the court concluded that the claims should be granted a priority date of 4 October 1979, aligning with another U.S. application. The court also found that a German patent disclosure, which was open to public inspection in Australia on 1 November 1979, did not anticipate the claims in Sandvik's application. This conclusion effectively negated the opposition's primary arguments. The court further noted that although the patent application had lapsed due to non-payment of fees, the matter of costs could still be addressed. Given that the opposition's grounds were not substantiated, the court ruled that costs should be awarded against Boart International.

In summary, the court found in favor of Sandvik Aktiebolag, dismissing the opposition and awarding costs against Boart International. The decision clarified the priority date for the patent claims and established that the prior art did not anticipate the claims. Despite the application's lapse due to non-payment of fees, the court's ruling on costs was definitive, reflecting the unsuccessful nature of the opposition.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established