Snap-On Technologies Inc v Beissbarth GmbH - [2003] APO 29

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 677139 in the name of SNAP-ON TECHNOLOGIES INC.

Title: Eight Sensor Wheel Aligner

Action: Opposition by BEISSBARTH GMBH under Section 104 of the Patents Act 1990

Decision: Issued .
Abstract

The amendments which were the subject of the opposition were filed in response to an adverse finding in a section 59 opposition. This finding was being appealed to the Federal Court. The opponent alleged that the amendments introduced matter not in substance disclosed in the specification as filed, caused the scope of the claims to fall outside the scope of the claims before amendment and did not meet the requirements of section 40.

The amendments were found to be allowable. Many of the issues raised by the opponent did not result from the amendments and/or re-opened issues that had been determined in the substantive opposition. Section 107 does not apply in the present circumstances. The remaining issues were readily resolvable as being allowable under section 102 of the Patents Act.

Costs were awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 677139 by Snap-On Technologies Inc., and an opposition by Beissbarth GmbH under section 104 of the Patents Act 1990.

BACKGROUND

Patent Application No. 677139 in the name of FMC Corporation was advertised accepted on 10 April 1997. It was subsequently assigned to the present applicant Snap-On Technologies Inc. The application was opposed by Beissbarth GmbH. On 17 May 2001 I issued a decision on this opposition (Beissbarth GmbH v Snap-on Technologies Inc. [2001] APO 20, referred to hereinafter as "the substantive opposition") in which I found that there were valid objections to the specification under section 40 (in particular, in respect of fair basis), subparagraph 18(1)(b)(i) (novelty) and subparagraph 18(1)(b)(ii) (inventive step), and allowed the applicant the opportunity to amend. On 6 June 2001 the applicant filed an appeal (No. V638 of 2001) against this decision in the Victorian District Registry of the Federal Court.

On 16 July 2001 the applicant filed section 104 amendments to the specification, and leave to amend was granted on 15 November 2001. Beissbarth GmbH filed a notice of opposition to these amendments on 6 March 2002, and served its Statement of Grounds and Particulars on
6 August 2002 after having been granted an extension of time in which to do so. No evidence has been served in relation to this opposition.

On 20 June 2002 the opponent requested the Commissioner's exercise of her discretionary powers under regulation 5.10(1)(a) to stay the opposition proceedings because of the Federal Court action and negotiations which were proceeding between the parties. In a letter dated
9 July 2002 the opponent was advised that the Commissioner was prepared to consider some deferral of proceedings on account of the Federal Court action but not on account of the negotiations, but noted that the timing of the deferral was not…

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: [2003] APO 29
Decision Date: 11 August 2003

CaseChat Overview and Summary

Snap-On Technologies Inc opposed Beissbarth GmbH's opposition to certain amendments to its patent application for an Eight Sensor Wheel Aligner. The opposition was based on the grounds that the amendments introduced matter not in substance disclosed in the specification as filed, caused the scope of the claims to fall outside the scope of the claims before amendment, and did not meet the requirements of section 40 of the Patents Act 1990.

The court considered the legal issues and found that the amendments were allowable. Many of the issues raised by the opponent did not result from the amendments and re-opened issues that had been determined in the substantive opposition. The court held that section 107 does not apply in the present circumstances. The remaining issues were readily resolvable as being allowable under section 102 of the Patents Act.

The court dismissed the opposition and allowed the amendments to the patent application. Costs were awarded against the opponent Beissbarth GmbH.

This decision is significant as it provides guidance on the allowability of amendments to patent applications and the circumstances in which section 107 of the Patents Act applies. The court's finding that many of the issues raised by the opponent did not result from the amendments and re-opened issues that had been determined in the substantive opposition highlights the importance of considering the context and history of a patent application when evaluating the allowability of amendments. Additionally, the court's holding that section 107 does not apply in the present circumstances clarifies the scope and application of this provision of the Patents Act.

Orders