United States Gypsum Company v CSR Building Products Ltd

United States Gypsum Company (USG) sought to appeal a decision of a delegate of the Commissioner of Patents (Commissioner) in relation to amendments to a patent application. CSR Building Products Ltd (CSR) filed an opposition to the requested amendments, which the delegate found in favour of CSR. The appeal was brought before the Court under section 104(7) of the Patents Act 1990 (Cth), although the proceeding was in the Court’s original jurisdiction. The legal issues before the Court were whether the delegate had erred in concluding that certain requested amendments were not allowable, and whether the delegate had erred in failing to consider and apply the limiting words “as a result of the amendment” as they appear in sections 102(1) and 102(2) of the Patents Act. The Court found that the second requested amendments were allowable. The Court concluded that the delegate had erred in finding that the requested amendments would not comply with the fair basis requirement in section 40(3) and that the claimed matter would not be in substance disclosed in the specification as filed. The Court found that the specification as filed disclosed the amendments and that the amendments did not result in the specification claiming matter not in substance disclosed. The Court allowed the appeal, reversed the decision of the delegate, and allowed the amendments requested by USG.