Sandvik Aktiebolag v. Boart International Limited

[1988] APO 19

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 This appeal has subsequently been withdrawn and consequently the matter can now proceed before the Patent Office.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.