Date: 8 May 2024
Patent Office: Australian Patent Office
Adjudicator: Greg Powell
Date:
Patent Office:
Adjudicator:
8 May 2024
Australian Patent Office
Greg Powell
CQMS Triumphs in Patent Opposition Against ESCO Group
CQMS has successfully opposed ESCO Group’s (ESCO) patent application on the grounds of lack of support and sufficiency. In an interesting twist, the Delegate exercised their authority under section 60(3) of the Patents Act 1990 and raised the additional opposition ground of inutility, which was not asserted by CQMS.
Background
Wear parts (eg teeth, shrouds and lips) commonly provided along the edges of excavating equipment can disengage through carrying heavy loads or under abrasive conditions. This may subsequently cause breakage or wear of downstream equipment, leading potentially to production inefficiencies. Traditional monitoring systems have limitations, often failing to detect wear levels and breakage in real-time. ESCO’s patent application proposed a system to monitor wear (ie via sensors and computerisation). However, as the opposition revealed, the patent specification lacked specific details, leading to many ‘holes’ to fill by the skilled reader.
Key Issues and Findings
CQMS opposed the patent on several grounds, including novelty, inventive step, support and sufficiency. The Delegate found that the claimed invention was novel and contained an inventive step, in contrast to CQMS’ assertions. Interestingly, CQMS did not present submissions on all claims in relation to the ground of support, rather focussing on a subset of dependent claims. The Delegate nevertheless agreed with CQMS that the subset of claims lacked support.
In relation to the disclosure requirement, the Delegate again sided with CQMS noting that the detail provided in the specification was ‘schematic and very general’, requiring the person skilled in the art to perform undue experimentation, and apply ingenuity, to perform the invention. In this regard, ESCO’s own evidence appeared to contribute to the Delegate’s finding given that there were challenges in mounting sensors on excavation buckets, which were not discussed in the specification and where claims defining sensor attachment had no constraints.
It was the Delegate’s authority under section 60(3) of the Act which also carried a heavy weight. Specifically, the Delegate found that the claimed invention could not achieve the desired purpose of monitoring equipment under extreme conditions without sensor damage. Accordingly, claims which do not include any form of sensor protection or obscuration prevention lacked utility.
Takeaways
The decision provides guidance to those seeking to challenge patent rights in Australia in that exploring all grounds of invalidity can increase chances of success. From the patentee’s perspective, being mindful of overly broad claims, ensuring adequate disclosure, and having narrower dependent claims protecting the commercial embodiment as a fallback, could be useful strategies for surviving challenge.
ESCO has until 8 August 2024 to amend the claims of its application, though the grounds of invalidity raised by the Delegate will not be easily resolved through amendment. Alternatively, ESCO may lodge an appeal before then – either to the Administrative Appeals Tribunal or Australian Federal Court.
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