Spruson & Ferguson Pty Ltd v Versatile Natures Ltd - [2023] APO 57

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Spruson & Ferguson Pty Ltd v Versatile Natures Ltd. [2023] APO 57

Patent Application: 2020353686
Title:Method for monitoring lifting events at a construction site

Patent Applicant:                   Versatile Natures Ltd.
Opponent:   Spruson & Ferguson Pty Ltd
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  10 November 2023
Hearing Date:  27 June 2023, matter referred to hearing officer.

Catchwords: PATENTS – section 59 – tracking lifting events at construction sites using weight sensing and geospatial location – grounds of novelty and inventive step – no ground made out – opposition unsuccessful – costs awarded against opponent

Representation: Patent attorney for the opponent: Spruson & Ferguson Patent & Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2020353686
Title:Method for monitoring lifting events at a construction site

Patent Applicant: Versatile Natures Ltd.
Date of Decision: 10 November 2023
DECISION
The opposition is unsuccessful. None of the grounds are made out.
I award costs according to Schedule 8 of the Patent Regulations (1991) against the opponent.
REASONS FOR DECISION
BACKGROUND

This matter relates to patent application 2020353686 in the name of Versatile Natures Ltd. (the applicant), having an earliest claimed priority date of 26 September 2019 through a priority claim to US application 62/906703. The application was examined and accepted after one examination report, with a Notice of Opposition being filed on 29 April 2022 by Spruson & Ferguson Pty Ltd (the opponent). The opponent filed evidence in support in the form of a declaration by Jonathan Gunnel (Gunnel) dated 31 October 2022 accompanied by exhibits JG-1 – JG-3, and a declaration by Kim Norton (Norton) dated 31 October 2022 with exhibit KN-1. The applicant did not file evidence in answer, and the hearing was set by way of written submissions. Submissions were filed by the opponent on 10 May 2023, with the applicant not filing any submissions. A delegate of the Commissioner set the matter for hearing by a delegate on 27 June 2023. The grounds relevant to the present matter are novelty and inventive step.
The request for examination was filed on 4 November 2021 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.
SPECIFICATION
The specification dives straight into a discussion of the embodiments of the present invention as being a new and useful method for monitoring lifting events at a construction site in the field of construction management. On the first page of the specification refence is made to FIG. 1 which I reproduce below.
While somewhat…

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: [2023] APO 57
Decision Date: 10 November 2023

CaseChat Overview and Summary

In the case of Spruson & Ferguson Pty Ltd v Versatile Natures Ltd, the court was tasked with determining the validity of a patent application for a method of monitoring lifting events at a construction site. The application was opposed by Spruson & Ferguson Pty Ltd, who argued that the invention lacked novelty and did not involve an inventive step. The key issue for the court was whether the invention, as claimed, was novel and non-obvious in light of the prior art. The court examined the claims of the patent application and compared them with the prior art documents cited by the opponent. After a thorough analysis of the evidence and arguments presented, the court found that the invention was novel and involved an inventive step. The opponent failed to demonstrate that the invention was anticipated by the prior art or that it would have been obvious to a person skilled in the art. Consequently, the opposition was unsuccessful, and costs were awarded against the opponent. The court's decision underscores the importance of a clear and complete disclosure in patent applications and the need for opponents to provide compelling evidence to support their claims of lack of novelty or inventive step.

Orders