Mechanical invention withstands opposition – 3 September 2015
The Peerless Chain Company recently opposed the grant of a patent on Australian patent application number 2009200745, ‘Flail Chain for Use in Debarking Trees’ in the name of Function Chains Pty Ltd. A wide range of grounds of opposition were raised and succinctly dismissed by Patent Commissioner’s Delegate R Subbarayan.
The opponent did not attend the hearing. Rather, they relied on their written submissions in which some of the issues were not fully pressed. Nonetheless, the decision provides a succinct summary of various aspects of Australian patent law applicable to mechanical inventions.
The application preceded the legislative reforms introduced on 15 April 2013, and as such the opponent had to establish that it is clear or practically certain that the patent would be invalid, in contrast to the more lenient balance of probabilities test applicable to younger applications.
At paragraphs 11 to 23, the Delegate details the principles of Australian claim construction and applies these principles to contentious integers of the claims.
During the novelty assessment, the reverse infringement test is applied. The invention is defined in terms of shank portions (such as portion 13). ‘Shank’ is construed to mean ‘straight’. The invention is found to be novel over a citation that includes an ‘isolated reference’ to a straight inner perimeter surface on the basis that ‘[a]nticipation requires more than such isolated references’, followed by Gyles J’s oft-cited ‘anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun’.
Obviousness, the antithesis of the Australian inventive step test, is neatly summarised: ‘The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention’. That test is applied to dismiss the opponent’s attack on the basis that the Delegate can find no basis on which to conclude that the skilled person would be motivated (against the express teachings of the document) to make the citation’s link rotate.
The Delegate forms the view that there is a real and reasonably clear disclosure of the claim invention within the body of the specification, and therefore rejects an assertion that the claims are not fairly based. The fair basis test is applicable to Australian patent applications in relation to which examination was requested prior to 15 April 2013, whereas a more stringent support requirement applies to younger applications.
The invention is held to be useful because it does what it is intended to do by the applicant.
On this basis, the Delegate concludes
‘None of the grounds of the opposition has been made out. The claimed invention is novel, inventive, useful, clear and fairly based. I direct that the application proceed to grant subject to any appeal’.