23 June 2009

Commissioner's expertise rejected

Case: VIP Plastic Packaging Pty Ltd and B.M.W Plastics Pty Ltd (Unreported)

Court: Federal (Victoria)

Judge: Kenny

Date: 2 June 2009

The arguments

VIP commenced proceedings with an application claiming to be the registered owner of an Australian patent and claiming that B.M.W had infringed the patent. B.M.W denied infringement and sought an order that the patent be revoked on the grounds that the invention lacked novelty and inventive step. VIP denied that the patent was invalid.

B.M.W applied for an order that the Commissioner of Patents be directed to re-examine the complete specification of the patent. VIP opposed that order.

By way of background, the re-examination provisions were introduced in the hope of utilising expertise in the patent office to decide appropriate questions and reduce the costs of court proceedings. Where court proceedings are not pending, the Commissioner can revoke the patent if the patentee fails to overcome an adverse report resulting from the re-examination. However, where court proceedings are pending, as was the case here, the Commissioner can only provide a report which may be of assistance to the parties. Ultimately, however, it would be up to the court to determine the validity of the patent.

B.M.W. argued that the questions of novelty and inventive step would require expertise in the relevant technological art, which the Commissioner (but not a judge) might be said to have. Thus, B.M.W.submitted that the Commissioner might exercise this technical skill without the need for evidence from expert witnesses, and that re-examination before the Commissioner was conducive to economy. B.M.W further undertook that it would not challenge the Commissioner's report. VIP declined to give that undertaking. Indeed, VIP argued that the report would be of limited value and even if relied upon by the court would not preclude or obviate the need for evidence on the issues of novelty or inventiveness. In fact, according to VIP, the Commissioner's report would be likely to raise the issues for debate and resolution would not be apt to resolve the remaining claims of invalidity and infringement.

The decision

Kenny agreed with VIP on the basis that the Commissioner's report after re-examination is not binding on the court. Indeed, the provision of the report would not relieve the court of the task of deciding issues of novelty and lack of inventive step by reference to the inadmissible evidence. If the Commissioner's report were unfavourable to VIP, VIP would want to put on evidence and dispute the report.

Kenny did take into account that it did not seem that the trial would be particularly lengthy or complex.


It is unfortunate that the option of using the Commissioner was not taken up. However, the Act does not provide the Commissioner with any teeth, so the court's decision was to be expected. If lengthy and inaccurate judgements are to be avoided, the technical expertise of the Commissioner should be used and enforced, where appropriate.

14 June 2009

Scope of Divisional Patent Application

The Case - Memcor Australia Pty Ltd v G.E. Betzdearborn Canada Company [2009] FCA 508.

In my post of 19 March 2009, I presented some basic information concerning the interpretation of the filing date of a divisional patent application.

In this case, GE had filed a divisional application which Memcor opposed on a number of grounds including that the invention defined by the divisional application was not disclosed in the parent application on which the divisional was based (Section 79B(1) of the Patents Act). If that was the case, then the validity of any patent granted on the divisional would be questionable since it would be tested as of the date of filing the divisional as opposed to the earlier filing date of the parent.

The Commissioner of Patents had previously found against Memcor's opposition and this case was an appeal from that decision.

It followed that the question to be tried was whether or not the divisional was an application for a patent for an invention falling within the scope of the claims of the parent application.

Issues of claim construction

In the parent, one of the claims that was considered started with the preamble: "A microfiltration membrane device, for withdrawing permeate substantially continuously from...". The relevant claim in the divisional application read as follows: "A microfiltration membrane device for withdrawing permeate from a multicomponent substrate, said membrane device including a multiplicity of...".

According to Memcor, the claim of the parent application was limited to a microfiltration device in use. In particular, Memcor said that the device of the parent application withdraws permeate "substantially continuously" when the fibres are in a particular condition, which was described in the relevant claim. By contrast, the divisional application covered a microfiltration device not in use, that is, "on the shelf".

In the arguments, GE referred to a useful summary by the Full Court in Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178. In that case, it was held that "Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification. If a claim is clear and unambiguous it is not to be varied, qualified or made obscure by statements found in other parts of the document."

A number of other rules of construction are also set out in paragraph 45 of the judgement, which are useful.

Claims that include the word "for" have raised difficulties in the past. However, these days it is well accepted that "for" should be regarded as equivalent to "suitable for". In other words, the relevant invention would not be limited to cover only while "in use". In any event, in this case, the court held that the natural and ordinary meaning of the sentence in question was to define the invention as a device suitable for a purpose rather than as a device only when used for that purpose.


It remains important for practitioners to ensure that claims are clear and unambiguous. One way of achieving this would be to make sure that clients understand the scope of protection defined by the claims, rather than relying on the rather patronising approach of not explaining clearly to clients the implications of claim wording.