Valance William McKenzie v Uwatec Australia Pty Ltd - [1995] APO 10

official notice

decision of a delegate of the commissioner of patents

Application : No. 649690 in the name of Valance William McKenzie

Title: Gauge Protection Apparatus

Action: Request for dismissal of opposition under section 59 of the Patents Act 1990 by Uwatec Australia Pty Ltd

Decision: Issued .
Abstract: The opposition in relation to the section 59(b) ground is not dismissed as the statement of grounds and particulars is sufficiently particularised, but it is dismissed in relation to the section 59(c) ground. There may have been a clerical error or omission in the name of the opponent on the Notice of Opposition. The opponent must initiate action to resolve the matter within 21 days from the date of this decision either by making a request to correct the Notice of Opposition or by providing submissions as to why correction of the Notice of Opposition is unnecessary. If the matter is not satisfactorily resolved then I must consider whether to dismiss the opposition and allow the application to proceed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 649690 by VALANCE WILLIAM McKENZIE and an opposition thereto by UWATEC AUSTRALIA PTY LTD and a request for dismissal.

background

Patent Application 649690 was advertised accepted on 2 June 1994.

Uwatec Australia Pty Ltd (Uwatec):

.served a notice of opposition, under section 59 of the Patents Act 1990, on the applicant, Valance William McKenzie (McKenzie) on 29 August 1994; and
.in accordance with regulation 5.4 of the Patents Regulations, served a statement of grounds and particulars on 21 September 1994.

On 20 October 1994, the applicant requested the Commissioner to dismiss the opposition under regulation 5.5 on the grounds that:

"That the opposition defined in the Statement of Grounds and Particulars served 21 September, 1994, cannot succeed in respect of some or all of the grounds relied upon.

That the opposition defined in the Statement of Grounds and Particulars served 21 September, 1994, is unsubstantiated in respect of some or all of the grounds relied upon, the grounds and particulars fail to give the applicant fair notice of the opposition to be met, and further fails to define the issues of the opposition.

That the opposition defined in the opponent's Notice of Opposition, insofar as it pertains to opposition based on the ground that the opponent "manufacture and export gauge protection apparatus similar to those described and claimed in application No 649690 and believe our activities would be affected by the grant of this patent" is not a ground prescribed in the Patents Act 1990.

That the opposition specified in the Statement of Grounds and Particulars served 21 September, 1994 is frivolous and vexatious in respect of some or all of the grounds relied on."

The applicant also filed statutory declarations in support of its request for dismissal by John Kingston Pizzey of Pizzey & Company, patent attorneys and Valance William McKenzie.

The hearing occurred in Canberra on 1 December 1994. The…

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.

Continue reading Valance William McKenzie v Uwatec Australia Pty Ltd

Details

AGLC: Valance William McKenzie v Uwatec Australia Pty Ltd [1995] APO 10
Case: [1995] APO 10
Decision Date: 16 February 1995

CaseChat Overview and Summary

Valance William McKenzie sought the dismissal of an opposition lodged by Uwatec Australia Pty Ltd against his patent application for gauge protection apparatus. The opposition was grounded on two sections of the Patents Act 1990, section 59(b) and section 59(c). The court had to decide whether the opposition was adequately particularised and whether the opponent had correctly identified itself on the Notice of Opposition. McKenzie argued that the opposition failed to provide adequate particulars and that there was a clerical error in the opponent's name on the Notice of Opposition. Uwatec maintained that the particulars were sufficient and that the error, if any, could be corrected.

The court found that the particulars for the section 59(b) ground were adequate as they allowed McKenzie to understand the case he had to defend. The court dismissed the section 59(c) ground as the particulars were merely a statement of the section without any material facts. The court also found that there may have been a clerical error in the opponent's name on the Notice of Opposition. Uwatec was given 21 days to correct the error or provide submissions as to why it was unnecessary. If the matter was not resolved, the court would consider dismissing the opposition and allowing the application to proceed to sealing. The court awarded costs against Uwatec as the request for dismissal had succeeded in part.

Orders