Stephen Dall v Transpiro Pty Ltd - [2023] APO 4

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Stephen Dall v Transpiro Pty Ltd [2023] APO 4

Patent Application: 2017268701

Title:Non-invasive sampling

Patent Applicant: Transpiro Pty Ltd

Opponent: Stephen Dall

Delegate: L. F. McCaffery

Decision Date: 24 January 2023

Hearing Date: Written submissions filed on 26 September 2022, 6 October 2022 and 17 October 2022

Catchwords: PATENTS - extension of time to request examination – Opponent’s actions led to the failure to request examination – extension is appropriate – opposition is unsuccessful – extension under s223(2)(a) granted – parties given opportunity to provide detailed submissions on costs.

Representation: Patent attorney for the Applicant: Spicer Spicer Pty Ltd
The opponent represented himself

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2017268701

Title:Non-invasive sampling

Patent Applicant: Transpiro Pty Ltd

Date of Decision: 24 January 2023

DECISION

The opposition is unsuccessful.

I grant an extension of 6 months under section 223(2)(a) to request examination.

Parties provided 2 weeks to make detailed submissions on costs.

REASONS FOR DECISION

Background

Australian application 2017268701 (the application) in the name of Transpiro Pty Ltd (the Applicant) was filed under the provisions of the PCT on 22 May 2017 and has an earliest priority date of 21 May 2016. The application entered the national phase on 21 December 2018. On 22 September the Commissioner directed that the Applicant request examination (the Direction). As no request was received by 22 November 2020 the application lapsed.
On 23 April 2021, the Applicant filed a request for an extension of time for 6 months to request examination (the extension), pursuant to the section 223(2)(b) (circumstances beyond the control of the person concerned). The request was advertised for opposition purposes on 3 June 2021.
Mr Stephen Dall filed a notice of opposition to the grant of the extension on 29 July 2021. A statement of grounds and particulars was filed on 27 August 2021.
On 23 September 2021 the Applicant filed an application for dismissal of the opposition on the grounds that it had no reasonable prospect of success. On 13 October 2021 a delegate of the Commissioner refused the application for dismissal, stating that Mr Vitale was reappointed as Director on 30 June 2020 and it was at least plausible that Mr Vitale could have investigated the status of the application and made any necessary changes to the address for correspondence. They therefore did not consider the opposition had no reasonable prospects of success. The Applicant responded on 19 October 2021 and stated that the reasons provided by the delegate led them to seek a direction that the application for an extension proceed under both s223(2)(a) (error or omission) and s223(2)(b). A direction to this extent was made on 14 December 2021, together with a revised timetable for evidence. Evidence in the matter was completed on 16 June 2022, and the matter was subsequently set for hearing by written submissions. These were completed on 17 October 2022.
On 18 November 2022 I wrote…

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 4
Decision Date: 24 January 2023

CaseChat Overview and Summary

This case involved a dispute between the patent applicant Transpiro Pty Ltd and Stephen Dall regarding the grant of an extension of time for the Applicant to request examination of its patent application. The opposition to the grant of the extension was brought by Mr Dall, who was previously a director of the Applicant. The Applicant filed an application for an extension of time to request examination under section 223(2) of the Patents Act 1990, which was advertised for opposition purposes. The key legal issue was whether the circumstances that resulted in the failure to request examination were sufficient to justify the grant of an extension of time under section 223(2) of the Patents Act 1990. The delegate considered that the evidence justified the grant of an extension of time under section 223(2)(a) of the Patents Act 1990, as the failure to request examination was due to an omission on the part of the Opponent, Mr Dall, who did not inform the Applicant of the Direction to Request Examination. The opposition was therefore unsuccessful, and the Applicant was granted an extension of 6 months under section 223(2)(a) to request examination. The parties were given two weeks to make detailed submissions on costs.

Orders