Tripmatic Limited v Safetell International Security Ltd

[1992] APO 45

official notice

decision of a delegate of the commissioner of patents

Application        :   No. 611038 in the name of TRIPMATIC
  LIMITED

Title             :   Pneumatic cash transfer system and
  canisters for use therein

Action : Opposition under s.59 (1952 Act) by
   SAFETELL INTERNATIONAL SECURITY LTD;
  hearing scheduled; opposition withdrawn

Decision           :   Issued            .
   No bar to sealing a patent on the
  application.  Applicant entitled to
  its costs.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 611038 by TRIPMATIC LIMITED and opposition thereto by SAFETELL INTERNATIONAL SECURITY LTD under section 59 of the Patents Act 1952

background

Patent application 611038 for an invention entitled "Pneumatic cash transfer system and canisters for use therein" was advertised accepted on 30 May 1991.  The earliest priority date for the application is 20 May 1988 based on an application in Great Britain.

On 30 August 1991, Safetell International Security Ltd ("Safetell") filed a notice of opposition under section 59 of the Patents Act 1952. Subsequently, on 27 September 1991 and 2 January 1992 Safetell served respectively its statement under reg. 5.4 and its evidence in support of the opposition. The patent applicant Tripmatic Limited chose not to serve evidence in answer and requested the matter be set for hearing.

The hearing was set for 11 August 1992 in the Melbourne session.  At that time Mr J Christiansen, patent attorney, who appeared for Safetell, advised me that late the preceding day he had been instructed to withdraw the opposition and that written confirmation to that effect was being furnished to the Patent Office.  Given that advice, I indicated that I considered the opposition withdrawn.  However, as the opponent had referred in its evidence to various prior art patent specifications alleging anticipation of the claimed invention, it remained for me to consider whether there existed any ground on which to bar the sealing of a patent on the application.  I therefore invited
Mr R Hind, patent attorney, who appeared for the applicant, to make any submissions he wished on the cited prior art; he accepted that invitation.

DECISION

Claims 1 to 9 relate to "a canister for carrying bank notes in an air tube conveyor system".  I am satisfied that none of the cited prior art documents anticipate the canister as claimed.

Claims 10 to 15 relate to "a pneumatic cash handling system" and define a system combination which includes a canister the subject of earlier claims.  I am also satisfied that the prior art documents do not anticipate these claims.

In my view no grounds exist to bar the sealing of a patent on the application.  Accordingly I direct that the application may be sealed.

COSTS

Mr Hind sought an award of costs for the applicant in the opposition matter.  Although the opponent withdrew its opposition, such action does not absolve the opponent from a liability for costs if that be appropriate.  Mr Christiansen indicated that his client could not resist an order for reasonable costs.  In my view the applicant is entitled to its costs in this matter, and given the timing of the withdrawal of the opposition, such costs can include costs up to and including costs associated with preparing for the scheduled hearing on 11 August 1992.

Therefore I award costs against Safetell International Security Ltd.

T R BRUHN
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  Carter Smith & Beadle, Melbourne