Surefoot IP Holdings Pty Ltd v All Footings Solutions Pty Ltd [2022] FCA 119

Surefoot IP Holdings Pty Ltd v All Footings Solutions Pty Ltd [2022] FCA 119

The Court was not satisfied that the error was a clerical error, but was satisfied that "sited" in claim 2 was an obvious mistake because the mistake and correction were apparent from the Patent itself: "sited" appeared only in claim 2, while claim 1 and the consistory clauses used "sized" in the corresponding phrase. The amendment therefore fell within s 102(3). There was no disentitling conduct, unfair advantage, unreasonable delay, or prejudice, and Surefoot moved promptly once the error was identified, so the Court exercised its discretion under s 105(1) to allow the amendment.

Jurisdiction
Australia
Judgment Date
17 February 2022
Procedural Posture
Patent Infringement Proceeding With Cross Claim for Revocation; Interlocutory Application to Amend Patent Claim / Application Under S 105(1) of the Patents Act 1990 (cth) Dealt With on the Papers Before Evidence in the Substantive Proceeding Had Been Filed
Outcome
Application to amend claim 2 of Australian Patent No. 2012276281 allowed; costs reserved.
Legal Topics
['amendment of Patent Specification' 'clerical Error' 'obvious Mistake' 'court Discretion to Amend Patent' 'patent Infringement' 'patent Revocation Cross Claim']
['intellectual Property' 'patents'] ['amendment of Patent Specification' 'clerical Error' 'obvious Mistake' 'court Discretion to Amend Patent' 'patent Infringement' 'patent Revocation Cross Claim']

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Procedural Posture

Patent Infringement Proceeding With Cross Claim for Revocation; Interlocutory Application to Amend Patent Claim / Application Under S 105(1) of the Patents Act 1990 (cth) Dealt With on the Papers Before Evidence in the Substantive Proceeding Had Been Filed

Legal Issues

  1. 1 ['Whether claim 2 of Australian Patent No. 2012276281 should be amended under s 105(1) of the Patents Act 1990 (Cth) by changing "sited" to "sized".' 'Whether the word "sited" in claim 2 was a clerical error or an obvious mistake for the purposes of s 102(3) of the Patents Act 1990 (Cth).' 'Whether the Court should exercise its discretion to direct the amendment.']

Ratio Decidendi

The Court was not satisfied that the error was a clerical error, but was satisfied that "sited" in claim 2 was an obvious mistake because the mistake and correction were apparent from the Patent itself: "sited" appeared only in claim 2, while claim 1 and the consistory clauses used "sized" in the corresponding phrase. The amendment therefore fell within s 102(3). There was no disentitling conduct, unfair advantage, unreasonable delay, or prejudice, and Surefoot moved promptly once the error was identified, so the Court exercised its discretion under s 105(1) to allow the amendment.

Court Disposition

Application to amend claim 2 of Australian Patent No. 2012276281 allowed; costs reserved.

Orders

  • ['Pursuant to s 105(1) of the Act, claim 2 of the Patent be amended in accordance with the mark-up changing "sited" to "sized".' 'Costs of the amendment application be reserved to be addressed at the same time as submissions on costs following judgment in the substantive proceeding.']