TCT Group Pty Ltd v Brolock Pty Ltd - [2024] APO 7

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

TCT Group Pty Ltd v Brolock Pty Ltd [2024] APO 7

Patent Application: 2021271942

Title:A Hinge

Patent Applicant: Brolock Pty Ltd

Opponent: TCT Group Pty Ltd

Delegate: D. S. Triffett

Decision Date: 9 February 2024

Hearing Date: Written submissions completed on 17 November 2023.

Catchwords: PATENTS – consideration of allowability of amendments under section 102 – s 102(1) whether the amendments extend beyond the disclosure as filed – s 102(2)(a) whether, as a result of the amendment, a claim would not in substance fall within the scope of the claims of the specification before amendment – s 102(2)(b) whether, as a result of the amendments, the claims are not clear and not supported – opposition unsuccessful – amendments are allowable – costs awarded.

Representation: Patent attorney for the applicant: Adams Pluck
Patent attorney for the opponent: Wrays Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2021271942

Title:A Hinge

Patent Applicant: Brolock Pty Ltd

Date of Decision: 9 February 2024

DECISION

The amendments are allowable, and I hereby allow the amendments advertised for opposition on 6 April 2023. The opposition is unsuccessful.

Costs according to Schedule 8 are awarded against the Opponent, TCT Group Pty Ltd.

REASONS FOR DECISION

The present matter relates to Australian Application 2021271942 (the application) in the name of Brolock Pty Ltd (the Applicant) and an opposition to an amendment under s 104(4) of the Patents Act 1990 (Cth)(the Act) by TCT Group Pty Ltd (the Opponent).
The application was filed as International Patent Application PCT/AU2021/050427 on 10 May 2021 and published as WO2021/226657 on 18 November 2021. The application entered national phase in Australia on 23 November 2021. The application was advertised as accepted on 27 January 2022. A notice of opposition to the grant of the patent under s59 of the Act was filed on 27 April 2022.
The Applicant filed a request to amend the specification on 30 December 2022 (the amendment). Leave to amend was granted and the application for amendment advertised for opposition on 6 April 2023. A notice of opposition to the amendment was filed by the Opponent on 6 June 2023. The present determination relates to the s104 opposition.
A statement of grounds and particulars (SGP) was filed on 6 July 2023. Neither party filed evidence in the opposition.
The Opponent filed Submissions in Support (Written Submissions in Support) on 6 October 2023. The Applicant filed Submissions in Answer (Written Submissions in Answer) on 3 November 2023. The Opponent filed Submissions in Reply (Written Submissions in Reply) on 17 November 2023.

Onus

The substantive amendments to the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) apply to the present case. The standard of proof in opposition proceedings, including oppositions under s 104(4),[1] is the balance of probabilities. The opponent bears the onus of proof.
[1] Cytec Industries Inc. v Nalco Company [2018] APO 4 at…

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: [2024] APO 7
Decision Date: 9 February 2024

CaseChat Overview and Summary

The present matter concerns Australian Application 2021271942, filed by Brolock Pty Ltd (the Applicant) and opposed by TCT Group Pty Ltd (the Opponent). The Applicant filed a request to amend the specification on 30 December 2022. Leave to amend was granted, and the application for amendment was advertised for opposition on 6 April 2023. The Opponent filed a notice of opposition to the amendment on 6 June 2023. The court had to determine whether the amendments to the specification extend beyond the disclosure as filed, whether the claims after amendment fall within the scope of the claims before amendment, and whether the claims are supported by the specification and are clear.

The court found that the amendments to the specification do not extend beyond the disclosure as filed. The court noted that the term "biasing means" was not explicitly defined in the specification as filed, and the Applicant's replacement of "biasing means" with "biasing spring" in claim 1 was considered a subclass of a "biasing means." The court also found that the other amendments, such as the description of the hydraulic damper being housed inside a sleeve with a sloped surface and the cam being a rotary cam fitted to the barrel portion of the hinge, were consistent with the disclosure in the specification as filed.

The court found that the claims after amendment fall within the scope of the claims before amendment. The court noted that the Applicant's amendment of claim 1 to specify a biasing spring and the movement of the damper in a direction which is substantially parallel to the hinge axis narrowed the scope of claim 1. The court found that all the proposed amendments to claims 3-7 also fall within the scope of the claims as accepted as these are dependent claims which merely add additional features to those defined in independent claim 1.

The court found that the claims are supported by the specification and are clear. The court noted that the technical contribution to the art related to the hydraulic damper lying outside of the plane of the panel and being mounted so that it moves in a direction which is parallel to the hinge axis, which results in improved predictability of the speed and smoothness of the closing action. The court found that the proposed amendments to the claims were consistent with the disclosure in the specification as filed and did not result in the specification not complying with subsection 40(3) with regard to support.

The opposition is unsuccessful, and the amendments are allowable. Costs are awarded against the Opponent according to Schedule 8.

Orders