Zetco Pty Ltd v Austworld Commodities Pty Ltd

Zetco Pty Ltd brought an action against Austworld Commodities Pty Ltd in the Federal Court of Australia, seeking relief for alleged patent infringement. The dispute centred around the validity and scope of a patent held by Zetco, which related to a method and system for cleaning and washing equipment. Zetco claimed that Austworld's operations infringed upon this patent, while Austworld contested the validity and scope of Zetco’s patent, questioning whether the claims were adequately supported by the disclosure in the patent.

The court was tasked with determining whether Zetco’s proposed amendments to the patent were allowable under section 102 of the Patents Act 1990, which permits amendments to a patent if they do not introduce new matter and are based on the matter disclosed in the specification. Additionally, the court had to exercise its discretion under section 105 of the Act to decide whether the amendments should be permitted, considering factors such as the completeness of disclosure, any unfair advantage sought by the patentee, any undue delay in seeking the amendment, and any other relevant circumstances.

In allowing the amendments, the court found that Zetco’s proposed changes were not introducing new matter and were consistent with the original disclosure. The court acknowledged the guidelines set out in Smith Kline & French Laboratories Limited v Evans Medical Limited, emphasizing that while the court should not be hostile to amendments, the onus is on the patentee to demonstrate why the amendments should be allowed. Zetco provided evidence to explain the reasons for the amendments and the chronology of events leading up to the request for re-examination by Austworld, which prompted the patent examination and the subsequent proposed amendments.

The court concluded that Zetco had discharged its burden to justify the amendments both in terms of their compliance with section 102 and the exercise of the court’s discretion under section 105. The amendments were found to clarify the patent description without introducing new matter or unfairly broadening the scope of the patent. Therefore, the court allowed the amendments to be made to the patent specification.