UON Pty Ltd v Indian Ocean Engineering Pty Ltd - [2024] APO 38

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

UON Pty Ltd v Indian Ocean Engineering Pty Ltd [2024] APO 38

Patent Application/Patent: 2021201628 & 2021102100

Title:SYSTEM FOR POWERING AND CONTROLLING AN ELECTRIC MOTOR; SYSTEM FOR POWERING AND CONTROLLING AN ELECTRIC MOTOR

Patent Applicant/Patentee: Indian Ocean Engineering Pty Ltd

Opponent: UON Pty Ltd

Delegate: Dr W.E. Guinea

Decision Date: 10 September 2024

Hearing Date: 13 June 2024, in Canberra, by videoconference

Catchwords: PATENTS – system for controlling electric motors, particularly variable speed generators – s59 – s101M – s40(3) support – s40(2)(a) clear enough and complete enough disclosure – s40(3) clarity – s40(2)(aa) best method – s101M(a) entitlement–– opposition unsuccessful – further submissions sought on costs

Representation: Counsel for the Applicant/Patentee: Amy Surkis
Patent Attorney for the Applicant/Patentee: Alistair Mann of Mann IP
Patent Attorney for the Opponent: Barry Newman of Armour IP

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application/Patent: 2021201628 & 2021102100
Title:SYSTEM FOR POWERING AND CONTROLLING AN ELECTRIC MOTOR; SYSTEM FOR POWERING AND CONTROLLING AN ELECTRIC MOTOR

Patent Applicant: Indian Ocean Engineering Pty Ltd

Date of Decision: 10 September 2024

DECISION

None of the grounds of either of the oppositions were made out. The oppositions under s59 and s101M are unsuccessful.

I allow both parties two (2) weeks from the date of this decision to provide further submissions on how costs should be awarded, and in particular to address my currently preferred position of a split award of costs reduced to reflect redundancies in the evidence and submissions as outlined in the reasons for this decision.

REASONS FOR DECISION

Background

Patent application 2021201628 (the “application”) was filed on 15 March 2021 in the name of Indian Ocean Engineering Pty Ltd. As there is no earlier priority claim the earliest priority date of the application is congruent with the filing date thereof. The application was advertised as accepted on 2 June 2022.
Innovation patent 2021102100 (the “patent”) was filed as a divisional to the application on 21 April 2021 in the name of Indian Ocean Engineering Pty Ltd. The patent thereby has an earliest priority date of 15 March 2021. The patent was certified on 17 August 2021.
For convenience, I will simply refer to Indian Ocean Engineering Pty Ltd throughout this decision as the “Applicant”, unless I otherwise consider Patentee to be more appropriate in the context concerned.
UON Pty Ltd (the “Opponent”) filed notices of opposition to the application and the patent on, respectively, 2 September 2022 and 12 April 2023. As required by Reg 5.6(1), the statement of grounds and particulars for the opposition to the patent (“SGPP”) was filed at the time of filing the notice of opposition. The statement of grounds and particulars for the opposition to the application (“SGPA”) was filed on 29 November 2022. .
Amendments to application and patent were requested on 1 June 2023. These were incorporated into the application and patent on 12 October 2023 and 16 October 2023, respectively. References…

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.

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Details

Case: [2024] APO 38
Decision Date: 10 September 2024

CaseChat Overview and Summary

The case involved oppositions to a patent application and patent by UON Pty Ltd against Indian Ocean Engineering Pty Ltd, both relating to a system for powering and controlling an electric motor. The oppositions were heard together by Dr W.E. Guinea, Delegate of the Commissioner of Patents. The Opponent raised multiple grounds for opposition under sections 59 and 101M of the Patents Act 1990, including lack of novelty, lack of inventive step, lack of utility, and failure to comply with disclosure requirements. After considering the evidence and submissions, Dr Guinea found that none of the grounds were made out and dismissed both oppositions. Dr Guinea ordered a split award of costs, to be adjusted to reflect redundancies in the evidence and submissions. Both parties were given two weeks to provide further submissions on costs before Dr Guinea would make a final costs order.

Orders