Tetra Pak International AB v J. GADSDEN PTY. Ltd

official notice

decision of a delegate of the commissioner of patents

Application : No. 530946 in the name of TETRA PAK INTERNATIONAL AB

Title: Machine for the Application of Suction Tubes to Packing Containers

Action: S 59 0pposition by J. GADSDEN PTY. LTD.; final decision following amendments

Decision: Issued . Clarity (see previous decision dated 10 November 1987), application amended, amendments allowed and application to proceed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 530946 TETRA PAK INTERNATIONAL AB and Opposition by J. GADSDEN PTY. LTD. under section 59 of the Patents Act 1952

background

In his decision in this matter dated 10 November 1987, the delegate found that, while the opposition was not successful, the specification did not satisfy section 40. The delegate afforded the applicant an opportunity to amend its specification to overcome this deficiency.

The applicant duly filed a request to amend on 23 November 1987. Following examination action, the request was advertised in the Official Journal on 13 July 1989. In the absence of opposition, this request was allowed on 8 February 1990 and the specification amended at that time in accordance with the request.

In accordance with office practice, the opponent was invited to comment on the application as amended, but did not respond within the time allocated. I am therefore in a position to finalize the opposition.

DECISION

I am satisfied that the amendments to the complete specification remove the defect which the delegate found in his earlier decision. Therefore, I direct that the application and complete specification as amended proceed to sealing.

LEO J. O'KEEFFE
Delegate of the Commissioner of Patents

Patent attorneys for the applicant: Watermark Patent & Trademark Attorneys, Melbourne
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne

CaseChat Overview and Summary

In the matter of Tetra Pak International AB versus J. GADSDEN PTY. Ltd, the dispute centres on Patent Application No. 530946 for a machine designed for the application of suction tubes to packing containers. J. GADSDEN PTY. LTD opposed the application under section 59 of the Patents Act 1952, which allows for opposition to patent applications on specified grounds. The dispute was ultimately resolved by a delegate of the Commissioner of Patents, who considered the amended specification following the applicant's efforts to address deficiencies identified in an earlier decision.

The legal issues before the delegate involved assessing whether the amendments to the patent application's specification adequately met the requirements of section 40 of the Patents Act 1990. This section mandates that a patent specification must disclose the invention in a manner that is clear and complete enough for the invention to be performed by a person skilled in the relevant field. The delegate needed to determine if the amended specification sufficiently met this requirement after the applicant made changes in response to the initial decision.

In delivering the decision, the delegate found that the amendments to the complete specification effectively addressed the deficiencies previously noted, thereby complying with section 40. The delegate's satisfaction with the amended specification led to the conclusion that the application should proceed to sealing. The delegate directed that the application, as amended, be allowed to proceed, effectively resolving the opposition raised by J. GADSDEN PTY. LTD.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established