Smart Hub Pty Ltd v Decathlon - [2022] APO 75

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Smart Hub Pty Ltd v Decathlon [2022] APO 75

Patent Application: 2019200673
Title:Diving mask having a built-in snorkel

Patent Applicant:                   Decathlon
Opponent:   Smart Hub Pty Ltd
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  28 November 2022
Hearing Date:  Written submissions completed 5 July 2022

Catchwords: PATENTS – section 59 – a full face snorkelling mask – grounds of clarity, support, utility, novelty, and inventive step – grace period – section 24 – regulation 5.23 – no grounds made out – opposition unsuccessful

Representation: Counsel for the opponent: D. M. Logan KC
Patent attorney for the opponent: Wynnes Patent and Trade Mark Attorneys

Counsel for the applicant: A. D. B. Fox SC
Patent attorney for the applicant: Cotters Patent & Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019200673
Title:Diving mask having a built-in snorkel

Patent Applicant: Decathlon
Date of Decision: 28 November 2022
DECISION
The opposition is unsuccessful. No grounds are made out.
I award costs according to schedule 8 against the opponent.
REASONS FOR DECISION
BACKGROUND

This matter relates to patent application 2019200673 in the name of Decathlon (the applicant), having an earliest claimed priority date of 5 May 2014 via a divisional status to application 2014393630 (the parent application). The patent application was examined and advertised as accepted on 27 August 2020. Following this, a notice of opposition was filed on 24 November 2020 by Smart Hub Pty Ltd (the opponent).
The request for examination was filed on 20 March 2019 and consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application. Thus, the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
The parties filed evidence in the matter with material also being filed outside of the normal rounds of evidence in support, answer, and reply. In their written submissions, the opponent pressed grounds of clarity, support, utility, novelty, and inventive step.
THE EVIDENCE
Evidence in support consists of the following:
·A first declaration by Dominic Spooner (Spooner #1) dated 24 May 2021 with exhibits DS-1 to DS-4
Evidence in answer consists of the following:
·A declaration by Christian Atichian (Atichian) dated 30 August 2021
·A declaration by Adam Barlow (Barlow) dated 26 August 2021 with exhibits AB-1 to AB-2
Evidence in reply consists of the following:
·A second declaration by Dominic Spooner (Spooner #2) dated 28 October 2021 with exhibits DS-5 to DS-6
·A declaration by Philipp Orth (Orth) dated 28 October 2021
With their written submissions for the hearing of the matter, the applicant submitted a…

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: [2022] APO 75
Decision Date: 28 November 2022

CaseChat Overview and Summary

This case involves a patent opposition brought by Smart Hub Pty Ltd against Decathlon, the applicant for a patent titled "Diving mask having a built-in snorkel." The opposition was based on various grounds, including clarity, support, utility, novelty, and inventive step. The opposition was ultimately unsuccessful. The court found that the claims were clear, supported by the specification, and useful. The invention was also found to be novel in light of the prior art and had an inventive step. The court awarded costs to the applicant, Decathlon.

The court began by establishing the common general knowledge in the art of snorkeling masks at the priority date of the patent application. The court found that the common general knowledge included basic snorkeling masks with rigid frames and faceplates, but did not include full face masks with separate upper and lower chambers. The court then considered the clarity and support of the claims, finding that the claims were clear and supported by the specification.

The court next examined the ground of utility. The opponent argued that the claims did not achieve the promises made in the specification, but the court found that the claims met the promise of providing a useful alternative snorkeling mask and snorkel apparatus.

The court then considered the novelty of the invention in light of the prior art. The opponent cited three documents as prior art, but the court found that two of the documents were not prior art because they were published with the consent of the applicant. The court found that the remaining document did not anticipate the claimed invention.

Finally, the court considered the inventive step of the invention in light of the common general knowledge and prior art. The court found that the invention was not obvious based on the common general knowledge alone or in combination with the prior art. The court concluded that the opposition was unsuccessful and awarded costs to the applicant.

In summary, the court found that the patent applicant had successfully defended the patent opposition and that the claims were clear, supported, useful, novel, and inventive. The opponent's arguments on the various grounds of opposition were not successful, and the court awarded costs to the applicant.

Orders