The South East Queensland Electricity Board v Techmark-miers Pty Ltd

official notice

decision of a delegate of the commissioner of patents

Application : No. 604869 in the name of The South East Queensland Electricity Board.

Title: Vehicle Loading/Unloading Apparatus.

Action: Opposition under section 59 (Patents Act 1952).

Decision: Issued . No evidence in support lodged. Opposition unsuccessful. Application directed to sealing after the expiration of the term of a petty patent divisional.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 604869 by The South East Queensland Electricity Board, and opposition thereto by Techmark-Miers Pty. Ltd.

background

The South East Queensland Electricity Board lodged patent application no. 604869 on 7 April 1988, under application no. 14460/88. It was advertised as accepted on 3 January 1991. Techmark-Miers Pty Ltd lodged a notice of opposition on 3 April 1991. Following an extension of time for filing of evidence no evidence in support of the opposition was lodged under Regulation 55 of the Patent Regulations by the due date of 3 October 1991.

On 5 May 1992, the attorney for the applicant (Mr C.P. Anese, patent attorney of Cullen & Co, Brisbane), pursuant to Regulation 61(2)(a), lodged a request applying for a time and place to be fixed for the hearing of the opposition.

On 7 May 1992, the attorney for the opponent (Mr John Waters, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne) informed the opposition clerk of the Patent Office of the appointment of Messers A.M. Cornell and J.M. Spark of Ferrier Hodgson & Co, Melbourne as Receivers and Managers of Techmark-Miers Pty Ltd, and advised the Patent Office that the attorney was withdrawing from the representation of the opponent in the opposition matter.

On 26 June 1992, Mr Cornell confirmed that Mr Spark and himself were appointed Receivers and Managers of Techmark-Miers Pty Ltd on 29 August 1991 pursuant to the powers contained in a Registered Debenture Charge created by the company. Mr Cornell indicated that he did not intend pursuing the notice of opposition but did not formally withdraw the opposition under Regulation 61A(1).

The opposition was set down for a hearing in Canberra on 22 July 1992. On 2 July 1992 the applicant advised by letter that they did not wish to be heard at the hearing, unless the opponent appeared or the Commissioner's delegate intended to find that a ground of opposition had been established.

In the event, no hearing was held on the opposition.

DECISION

The opponent did not lodge any evidence in support of the opposition and did not appear at the hearing. As a result, no ground of opposition was made out, and I find that the opposition fails.

However, I am not prepared to direct that the application proceed immediately to sealing. On 17 August 1992, Mr Anese informed the Patent Office that

"In the event that the Hearing Officer considers that patent
    no. 617288 in some way poses an obstacle to the sealing of a
    patent on application no. 604869, the Hearing Officer is
    invited to delay his decision until after 4 September 1992
    (the deadline for applying for extension of the term of the
    petty patent) to satisfy himself that the term of the petty
    patent will not be extended."

I note that petty patent no. 617288 was filed as a divisional application of the present application.

Considering the claims of the respective applications, it seems to me that an objection under section 64(2) may be applicable. However, I am not in a position to make a decision on this matter at this time, as the applicant has not been given an opportunity to be heard on this.

I also note that the term of the petty patent will cease on the 4 October 1992, providing the term is not extended. If the term is not extended there can be no objection under section 64(2) to the sealing of the present application after 4 October 1992.

Therefore, providing no application for an extension of the term of petty patent no. 617288 is filed, I direct that patent application no. 604869 proceed to sealing on or after the 5 October 1992.

COSTS

In opposition proceedings before the Commissioner, costs usually follow the event. There is no reason to depart from this in the present matter, and I therefore award costs against the opponent.

D. Herald
Assistant Commissioner of Patents

Patent attorneys for the applicant : Cullen & Co, Brisbane

The South East Queensland Electricity Board was the applicant in a patent application lodged on 7 April 1988 for a Vehicle Loading/Unloading Apparatus. Techmark-Miers Pty Ltd opposed this application. The dispute was heard by a delegate of the Commissioner of Patents. The opposition was not supported by evidence, and no hearing was held. The primary legal issue was whether the opposition to the patent application was valid and supported by evidence. The court determined that the opposition was unsuccessful as no evidence was provided, and the opposition did not appear at the hearing.

The court considered the lack of evidence and the absence of the opponent at the hearing. The Commissioner's delegate found that no ground of opposition had been established, resulting in the failure of the opposition. The court also considered the implications of a related petty patent application that was a divisional of the main application. The delegate concluded that an objection under section 64(2) might be applicable but could not make a decision without hearing from the applicant. Given that the term of the petty patent would expire on 4 October 1992, barring an extension, the delegate directed that the application proceed to sealing on or after 5 October 1992.

The court awarded costs against Techmark-Miers Pty Ltd, as is customary in opposition proceedings before the Commissioner. The decision highlights the importance of substantiating oppositions with evidence and the potential impact of related patent applications on the sealing process. The outcome ensures that the applicant's patent application can proceed to sealing, barring any further objections or extensions of related patents.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established