Published Australian Patent Office decisions – February 2019 Review

13 March 2019

The following review of published Australian Patent Office decisions in February 2019 may be useful for IP practitioners, patent attorneys, or those who manage patent and patent application assets. It provides guidance about:

1.   the importance of properly preparing objections to a patent application, and the consequences of failing to do so – being an adverse costs order significantly higher than scale costs (Simco Mining v CQMS and CRRC Qishuyan v GE       Global Sourcing);

2.   when an extension of time to file expert evidence will be granted – being when your expert is sick in hospital, and has over estimated his own ability to complete the evidence in time;

3.   when a specific type of reagents may be inferred by the context of the claims (BASF The Lubrizol Corporation);

4.   the application of ordinary meanings to words – a nice reminder (Dorel Australia v HBG).

Simco Mining Products and Services Pty Ltd v CQMS Pty Ltd [2019] APO 5 (1 February 2019)

The Application Invention was improvements to excavator buckets by a support arch, and certain geometric parameters and ratios of the bucket.

The Opponent objected on several grounds including the nominated person’s entitlement, lack of clarity, definition of the invention, novelty, inventive step and that it was not a manner of manufacture.

In heavily criticising the Opponent’s submissions, the Commissioner noted that the exact grounds of opposition were not stated, merely the legislative provisions which permit opposition. The Commissioner rejected the Opponent’s submissions that the Applicant’s evidence in answer must be limited to directly answering the evidence in support. The Opponent often confused relevance of evidence with admissibility.

The Opponent filed unsolicited new evidence late. In determining its admissibility, the Commissioner considered Merial Limited v Bayer [1] and the “nature of the information and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way.” The new evidence related to public disclosure, which would not affect the outcome of opposition.

No entitlement by nominated person: The Commissioner rejected the Opponent’s circular assertion that the nominated person is not entitled to a grant of a patent because the patent cannot be granted. So the Commissioner did not consider matters outside the scope of section 59 of the Act.

Clarity: The Commissioner rejected arguments relying on purported confusion between use of the alleged incompatibly of “substantially parallel” and “generally rectangular”. The Applicant’s use of the word “generally” in several claims, including in respect of a rectangle, was acceptable because modern machine parts seldom have simple geometry. Using the word ‘a’ (an indefinite article) was fine, in reference to a component first mentioned. Using the word ‘further’ in the Patent Application to describe a ratio different but continuous to a ratio described in the Additional Parent, incorporated the range defined in the Additional Parent, into the Patent Application.

Novelty: A prior art document that did not disclose a feature which permitted ‘the mounting of replaceable wear members to the wing members’ and materially affected the way the claimed invention worked, did not disclose all essential features of a claim. Another prior art document which described a trapezoid bucket, rather than rectangular (as claimed by the Patent Application) did also not disclose all essential features.

Inventive Step: The Commissioner could not satisfy itself there was no inventive step, because the Opponent failed to file any evidence about common general knowledge.

Variation of costs: costs were awarded against the Opponent (including 5 times the scale amount for “Preparation of case for hearing” in Schedule 8) because, aside from the Opposition being unsuccessful: (a) the Opponent’s submissions were not clear; (b) 39 prior art documents were submitted without their relevance particularised, of which only 3 were relied on by the Opponent; (c) the Opponent’s summary was filed late and was inconclusive; (d) there was a general failure by the Opponent to ‘define the boundaries’ of its case.

UON Pty Ltd v Taranis Power Group Pty Ltd [2019] APO 6 (5 February 2019)

The Opponent applied to file additional evidence in support of its opposition after the due date.

The Commissioner considered TRED [2] and Merial [3] in applying the relevant regulations[4] and asked itself: (a) has the party made all reasonable efforts to comply with all relevant filing requirements, and if yes, was the failure to file evidence in time despite the party (or their attorney) acting promptly and diligently at all times; or (b) were there exceptional circumstances that warrant the extension?

The Opponent submitted that its expert was hospitalised for several months leading up to the due date (and worked for the Opponent at reduced hours). The expert advised the Opponent for several months it could provide the requested evidence, and the Opponent was led to believe the evidence was much more progressed than it was. Other experts were either not familiar enough with the subject matter, or engaged in other projects. Other independent experts in the field were appearing as independent experts for the Opponent in separate proceedings and so the Opponent didn’t want to use them and comprise their independence.

The Commissioner asked itself whether the unavailability of an expert to complete its evidence was “beyond the control of [the Opponent] in that it was something that could not have been anticipated and acted upon”. If yes, there were exceptional circumstances.

Prior to the expert’s diagnoses for cancer and the need for surgery (unrelated to previous health concerns and prohibitive of evidence delivery), the Opponent believed the expert could deliver. By that point, just a few weeks before the due date however, it was “unrealistic to expect the Opponent’ to locate and engage an alternate expert and for that expert to provide their evidence in such a short timeframe”. These circumstances were exceptional circumstances. They also supported grounds for extension under (a) above (i.e. reasonable efforts and acting promptly and diligently).

The Commissioner suggested it may have been more diligent to obtain an accurate indication of how much evidence was left to draft by the expert earlier, but that this wasn’t fatal.

The extension of time was granted.

CRRC Qishuyan Institute Co., Ltd v GE Global Sourcing LLC [2019] APO 7 (6 February 2019)

The Application Invention related to wheel frames for use in wheel drive assemblies of off-highway vehicles (heavy machinery vehicles).

The Opponent opposed on ground of lack of novelty, inventive steps, and clarity.

Novelty and inventive step: The Opponent’s submissions centred on the construction of terms in the independent claims “body of unitary construction” and “integrally formed” as not excluding a welded construction. The Applicant submitted that the speciation clearly required the component be made from a single piece of metal. The specification included a dictionary defining those terms, and used the word “monolithic”. In interpreting those definitions, the Commissioner was satisfied the specification would not include a wheel frame body made with different parts welded together. The prior art documents didn’t disclose how the wheel frame structures referred to in those documents were produced. Although they may have been produced as a single piece, it was possible that it was produced in difference parts.

The Commissioner was not satisfied on the balance of probabilities the frame structure in the prior art was produced in a single piece, and so the independent claims in the Patent Application were novel.

The Opponent was also unable to establish that problems with making a wheel frame in a single piece by casting or other fabrication methods was common general knowledge, or that making wheel frames as a unitary structure was common and routine practice. So, the Commissioner was not satisfied that the person skilled in the art would have as a matter of routine been led to try and make the wheel frame in a single piece of material, thus making it a “body of unitary construction” in the sense used in the patent application. The Opponent was unable to discharge its onus.

Costs were awarded against the Opponent (including 2 times the scale amount for “Preparation of case for hearing” in Schedule 8) because, aside from the Opposition being unsuccessful: (a) the first set of the Opponent’s written submissions lacked anything useful to enable the Applicant’s response; (b)the Opponent’s second set of submissions, although addressing shortcomings of the first set, failed to substantiate alleged disclosure deficiency and attempted to introduce non-pleaded grounds, and was filed 6 days late. The Commissioner noted the importance of detailed and meaningful submissions is even more critical when the parties intend appearing only through written submissions.  

BASF SE v The Lubrizol Corporation [2019] APO 8 (13 February 2019)

The Application Invention was quaternary ammonium amide and ester salts, processes for making them, and their use as additives, including their use in fuels, such as diesel fuel and fuel oils.

The Opponent opposed the Application and the Applicant sought certain amendments, prior to the opposition hearing. The Opponent opposed those amendments.

The Commissioner noted that the amendments were subject to the ‘Raising the Bar’ requirements. That is, the Commissioner considered that amendments which sought the adding or claiming of new matter which “extends before the disclosure of the specification as filed” were impermissible.

The Opponent alleged that one of the amendments allowed for certain reaction products where no carboxylic acid component was present in a detergent. However, the claims still clearly required an acid group that was present in the structure of a detergent. The Commissioner considered that acid group could only have come from a carboxylic acid group, so the amendment was allowed.

The Opponent also alleged that including the term “an acid group” in claim 1 was broadening, because accepted claim 2 referred to “any acid group”, and “an acid group” means a recognised acid group to the skilled reader. The Commissioner agreed, but didn’t think this resulted in a “completely new generic definition” of the relevant component, given the presence of other key groups on the detergent.It found use of the word “any acid” to be as an indiscriminate adjective, meaning one of several types. This amendment did not ‘add matter’ and was acceptable.

The Opponent alleged the specification post amendment would not disclose the invention clearly and completely to a person skilled in the art. The Commissioner cited Evolva’s[5] summary of the relevant principles, including: (a) what is the scope of the invention; (b) what does the specification disclose to the skilled person; (c) does the specification provide all things that fall within the scope of the claim, including: can the invention work and be performed without undue burden across all claims. The Commissioner rejected the Opponent’s allegations that the post-amended claims included new unworkable embodiments that the reaction not be performed in the presence of a protic solvent. This was because pre-amendment claim 1 was not limited to a protic solvent system, and there was no evidence that an expert would have construed the description to limit it so. An expert after the amendment would not have construed the claim 1 to include reactions without use of the protic solvents.

Standard costs were awarded against the Opponent, despite the Applicant’s allegations of abuse of process, because the Opponent “presented their case professionally and they followed a process which was available to them”.

Dorel Australia Pty Ltd v HBG IP Holding Pty Ltd [2019] APO 9

The Application Invention was a child restraint for a vehicle. Embodiments included that the seat attachment was centrally located and/or configured to accept lap/lap-sash belts or ISOFIX/LATCH belts (a newly available and alternate means of securing child safety seats).

The Opponent alleged no claims were a manner of manufacture, novel or comprised an inventive step. The Raising the Bar amendment did not apply to the opposition, and so the Opponent was required to convince the Commissioner that it was clear or practically certain the patent would be invalid if granted.

Novelty. The Commissioner applied Meyers[6] and General Tire & Rubber. [7] The Commissioner needed to determine what was meant by the terms “front” and “rear” of the safety seat shell, and “substantially midway”. The Commissioner applied the words’ ordinary meaning. “Substantially” indicated that “small deviations from the geometric midpoint are allowed”. A prior art document did not defeat novelty of the Application Invention, because a part of its aperture was not “substantially midway”. Another prior art document disclosed many features of one of the claims, but did not disclose: “each aperture configured to receive a restraining strap, being a vehicle seat belt.”

Inventive Step: The Opponent pointed to Konami,[8] alleging that it wasn’t relevant that each feature was in the CGK, only what the skilled addressee would conclude from the CGK. The Opponent did not outline what elements, features, understanding or methods comprised CGK before the priority date. Even if the Commissioner inferred (with difficulty) what was from the CGK based on the Opponent’s evidence, the invention arrived at was not the invention as claimed, because it did not have an aperture which was clearly located substantially midway between the front and rear of the seat shell.Further the Opponent’s evidence was not preferred, because its witness’ experience was gained in the early 1990’s, and not current, and gaps in the witness’ understanding were demonstrated by contrary evidence submitted by the Applicant.

Manner of Manufacture: The Commissioner applied Research Affiliates,[9] RPL[10] and D’Arcy,[11] noting that while the principles from the former two were in the context of computer implemented inventions, the general principles apply to any subject matters, as was made clear in the latter. The Opponent’s argument that the invention was merely a label advising the installer not utilise a particular path, and so was not in the technical realm, was rejected. The Application Invention provided, in substance, a material advantage.

[1] Merial Limited v Bayer Intellectual Property GmbH[2015] APO 16.

[2] TRED Design Pty Ltd v Julie- Anne McCarthy and Bradley McCarthy [2013] APO 57

[3] Merial Limited v Novartis AG [2013] APO 65

[4] Regulation 5.9 of the Regulations

[5] Evolva SA [2017] APO 57 at [22] to [45].

[6] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19.

[7] General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457.

[8] Konami Australia Pty Ltd v Aristocrat Technologies Australia Pty Ltd [2016] FCAFC 103.

[9] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150.

[10] Commissioner of Patents v RPL Central Pty. Ltd. [2015] FCAFC 177.

[11] D’Arcy v Myriad Genetics Inc. [2015] HCA 35.