ToolGen Incorporated v Fisher (No 3) [2024] FCA 539

ToolGen Incorporated v Fisher (No 3) [2024] FCA 539

The claims of the patent application contained an obvious mistake apparent to the skilled reader; the proposed amendments corrected this obvious mistake in a way that would be obvious to such a reader. Accordingly, pursuant to s 102(3)(a) of the Patents Act 1990 (Cth), the otherwise applicable limitation in s 102(2)(a) did not apply, and the Court allowed the amendment using its discretion under s 105(1A).

Parties
Appellant/cross Respondent: ToolGen Incorporated; First Respondent/first Cross Appellant: Grant Fisher; Second Respondent/second Cross Appellant: ACN 004 552 363 Pty Ltd
Jurisdiction
Australia
Judgment Date
23 May 2024
Procedural Posture
Appeal and Cross Appeal From Decision of Delegate of the Commissioner of Patents / Judgment After Interlocutory Application to Amend Patent Claims Post Principal Judgment
Outcome
Appeal dismissed; cross-appeal allowed; amendments to specification directed and application to proceed to grant as amended; costs ordered.
Legal Topics
Patents, Patent Amendments, Obvious Mistake, Powers on Appeal, Statutory Interpretation, Exercise of Discretion
Intellectual Property Patents Patent Amendments Obvious Mistake Powers on Appeal Statutory Interpretation Exercise of Discretion

Case Brief

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Parties

ToolGen Incorporated

Appellant/cross Respondent

Grant Fisher

First Respondent/first Cross Appellant

ACN 004 552 363 Pty Ltd

Second Respondent/second Cross Appellant

Procedural Posture

Appeal and Cross Appeal From Decision of Delegate of the Commissioner of Patents / Judgment After Interlocutory Application to Amend Patent Claims Post Principal Judgment

Legal Issues

  1. 1 Whether proposed amendments to patent specification are allowable under s 102 of the Patents Act 1990 (Cth)
  2. 2 Whether the amendment corrects an 'obvious mistake' within the meaning of s 102(3)(a)
  3. 3 Whether the composite claim contains an obvious error and if the proposed correction is obvious to a person skilled in the art

Ratio Decidendi

The claims of the patent application contained an obvious mistake apparent to the skilled reader; the proposed amendments corrected this obvious mistake in a way that would be obvious to such a reader. Accordingly, pursuant to s 102(3)(a) of the Patents Act 1990 (Cth), the otherwise applicable limitation in s 102(2)(a) did not apply, and the Court allowed the amendment using its discretion under s 105(1A).

Court Disposition

Appeal dismissed; cross-appeal allowed; amendments to specification directed and application to proceed to grant as amended; costs ordered.

Orders

  • The appeal be dismissed.
  • The cross-appeal be allowed.