William King v KMJ Corporation Pty Ltd - [2005] APO 37

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 754492 in the name of WILLIAM KING

Title: Latching Device

Action: Opposition Under S.59 of the Patents Act by KMJ CORPORATION PTY LTD

Decision: Issued 8 September 2005.
Abstract

Opposition is successful on the grounds of lack of novelty and lack of inventive step.
The disclosure of the invention by the applicant to the opponent via drawings before the priority date of the application was done without any explicit or implicit confidentiality. The statements by the applicant that the invention was fully developed before he approached the opponent further support this disclosure, notwithstanding that none of the drawings show a fully assembled hose reel. Since the disclosure presents a full solution to the problems of the prior art, the claims lack an inventive step.
Due to the nature of this disclosure, there was no subject matter in the specification that could be added to the claims that was not disclosed before the priority date of the application.
Application refused.
Costs awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 754492 by William King and Opposition thereto under S.59 of the Patents Act by KMJ Corporation Pty Ltd.

BACKGROUND

Patent application 754492 (10015/00) was originally filed as a non-convention application by William King (“King”) on 4 January 2000. It originally claimed no priority. The application was advertised accepted on 21 November 2002, and KMJ Corporation Pty Ltd (“KMJ”) filed a notice of opposition on 19 February 2003.
Evidence in support was finalised on 9 December 2003 following two extensions of time. Evidence in answer was due by 9 March 2004. However, no evidence was served within that time by King. In addition, on 23 March 2004, advice was received from the Patent Attorney firm Sandercock & Cowie, who had previously been acting for King, that they no longer represented him in this matter. Henceforth King was representing himself. A hearing (the “original hearing”) was set for 10 May 2004 in Melbourne, and held on that date. At the original hearing, KMJ was represented by Norman Morcom, patent attorney, of Morcom Pernat. Mark Juzva and Shane Harris, both of KMJ also attended. King did not make an appearance.
On 29 April 2004, shortly before the hearing, King filed a letter (dated 14 April 2004) which responded to the evidence in support that had been field by KMJ. While it seemed that this letter was in the form of submissions, it also included attachments setting out some correspondence between King and KMJ as well as King and Sandercock & Cowie, what is apparently a cover page of a marketing proposal to King and KMJ, a payment schedule showing payments being made to King and a receipt for sales of various hose reels (which form part of the invention).
It became obvious at the hearing that King had not sent a copy of this letter to…

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: [2005] APO 37
Decision Date: 8 September 2005

CaseChat Overview and Summary

The decision of the delegate of the Commissioner of Patents in William King v KMJ Corporation Pty Ltd involves the opposition to patent application 754492 by KMJ Corporation Pty Ltd, which was originally filed by William King on 4 January 2000. The opposition was based on the grounds that the invention claimed lacked novelty and an inventive step. The opposition process involved several hearings and the filing of various declarations and evidence from both parties. Ultimately, the delegate found that the invention was not novel due to a disclosure by King to KMJ before the priority date of the application, and it also lacked an inventive step. Consequently, the application was refused, and costs were awarded against King.

The legal issues that the court had to decide included whether the invention complied with the requirements of the Patents Act, specifically whether it was a manner of new manufacture, whether it was novel, and whether it lacked an inventive step. The court examined the evidence provided by both parties, including declarations and attachments, and found that the disclosure by King to KMJ before the priority date rendered the invention non-novel and lacking an inventive step. The court also noted that the specification fully described the invention and that the claims were clear and fairly based. Given these findings, the application was refused, and costs were awarded to the opponent.

Orders