Catchwords: PATENTS – s59 – novelty – no claims found to lack novelty – inventive step – no claims found to lack inventive step – s40(2)(a) clear enough and complete disclosure – lack of clear enough and complete enough disclosure for all claims – s40(3) support – lack of support for all claims – utility – no claims found to lack utility – costs – opposition successful – further submissions sought on award of costs

Representation: Counsel for the Applicant: Andrew Fox SC
Patent Attorney for the Applicant: Simon Reynolds and David Müller-Wiesner of GLMR
Counsel for the Opponent: Gilbert Tsang
Patent attorney for the Opponent: Philip Gehrig of Wrays

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2017201858
Title:Hinge

Patent Applicant: Polaris IP Pty Ltd

Date of Decision: 9 February 2024

DECISION

The opposition under s59 is successful. All the claims lack a clear enough and complete enough disclosure under s40(2)(a) and also lack support under s40(3). No other grounds of opposition are made out.

I allow both parties two (2) weeks from the date of this decision to provide submissions on the nature and quantum of costs to be awarded.

I allow the Applicant two (2) months from the date of this decision to propose amendments overcoming the deficiencies identified in this decision.

REASONS FOR DECISION

Background

Patent application 2017201858 (the “application”) entered national phase on 17 March 2017 from PCT/AU2017/050133. PCT/AU2017/050133 was filed on 16 February 2017 in the name of Michael Christopher Stuart. By virtue of a request filed under s113 on 12 June 2019, the Applicant of record became Polaris IP Pty Ltd (the “Applicant”). The application has an earliest priority date of 17 February 2016.
On 3 March 2021 the Opponent filed notice of opposition to the application under s59 of the PatentsAct 1990. The statement of grounds and particulars (“SGP”) for the s59 opposition was filed on 3 June 2021. Amendments, which were allowed, were proposed to the SGP on 18 August 2021, in response to a direction for further and better particulars. Hereon, references to the SGP will be to the amended version of the SGP.
Amendments to the specification were requested on 30 August 2022. These were incorporated into the specification on 4 January 2023. References to the specification from hereon are to the specification as it stands as a result of those amendments.
The filing of evidence in support (“EIS”) was completed on 1 December 2021. This consisted of:
· a declaration by Mr John Mannex O’Brien (“O’Brien”), dated 28 October 2021, with supporting annexures JMO-1 to JMO-9;
· a first declaration by Mr William Samuel Hunter (“Hunter1

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.

Continue reading TCT Group Pty Ltd v Polaris IP Pty Ltd

Details

AGLC: TCT Group Pty Ltd v Polaris IP Pty Ltd [2024] APO 5
Case: [2024] APO 5
Decision Date: 9 February 2024

CaseChat Overview and Summary

In the case of TCT Group Pty Ltd v Polaris IP Pty Ltd, the Australian Patent Office heard an opposition against a patent application filed by Polaris IP Pty Ltd for a hinge invention. The opposition was brought by TCT Group Pty Ltd, which argued that the claims of the application were invalid on various grounds, including lack of novelty, lack of inventive step, and lack of utility. The opposition was successful on the grounds of s40(2)(a) and s40(3) of the Patents Act 1990, which relate to clear and complete enough disclosure and support of the claims by the specification, respectively. The court found that the specification did not provide a clear and complete enough disclosure of the invention for all the claims and that the claims were not supported by the specification. The court also found that the claims encompassed embodiments that would not effectively function as hinges, but did not find that this amounted to a failure of utility. The opposition was not successful on the grounds of novelty, inventive step, and utility. The court allowed the applicant two months to propose amendments to overcome the deficiencies identified in the decision. The court also invited both parties to provide submissions on the nature and quantum of costs to be awarded, with a preliminary view that no costs should be awarded due to the opponent's conduct during the opposition.

Orders