Sprintquip Pty Ltd v Lockit Systems (Aust) Pty Ltd [2014] APO 77 (26

November 2014)
Last Updated: 26 November 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sprintquip Pty Ltd v Lockit Systems (Aust) Pty Ltd [2014] APO 77
Patent Application: 2007222896
Title: Assemblies and method for securing surface mounted articles
to accommodate applied loads
Patent Applicant: Lockit Systems (Aust) Pty Ltd
Opponent: Sprintquip Pty Ltd
Delegate: R Subbarayan
Decision Date: 26 November 2014
Hearing Date: 4 September 2014, in Canberra
Catchwords: PATENTS - section 59 opposition to the grant of a
patent energy absorbing fixture for automatic teller machines novelty inventive step clarity fair basis - opposition successful
claim 29 not novel claim 16 not fairly based costs awarded
against applicant
Representation:
Associates

Patent

applicant:

Opponent: Charles Berman of FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007222896

John

Walsh

of

Walsh

and

Title: Assemblies and method for securing surface mounted articles

to accommodate applied loads
Patent Applicant: Lockit Systems (Aust) Pty Ltd
Date of Decision: 26 November 2014
DECISION
All of the claims are clear and fairly based except for claim 16 which
is not fairly based. Claim 29 is not novel and lacks an inventive step.
All of the other claims are novel and inventive.
I allow the applicant two months from the date of this decision in
which to propose suitable amendments to overcome the adverse
findings. I award costs according to Schedule 8 against Lockit
Systems (Aust) Pty Ltd.
REASONS FOR DECISION
BACKGROUND
Patent application 2007222896 in the name of Lockit Systems
(Aust) Pty Ltd was filed as a PCT application on 9 March 2007 and
claims priority from Australian provisional patent applications
2006901216 and 2006903491 filed 9 March 2006 and 29 June 2006
respectively. Following examination it was advertised as accepted on
31 May 2012. The application has been opposed under section 59 of
the Patents Act by Sprintquip Pty Ltd who filed the notice of
opposition on 31 August 2012.
GROUNDS OF OPPOSITION
The application has been opposed under the grounds of Novelty,
Inventive Step, Clarity and Fair Basis.
EVIDENCE
Evidence filed for the opposition comprises the following:
Evidence-in-support comprising a declaration by Gerald
Jonathan Andreasson dated 12 July 2013 with exhibits GJA-1 to GJA3.
Evidence-in-answer comprising a declaration by Richard Gould
dated 29 October 2013 with exhibit A.
Evidence-in-reply comprising a declaration by Gerald Jonathan
Andreasson dated 24 January 2014 with exhibits GJA-4 to GJA-5.

Mr Andreasson is a consultant to the security industry with over

20 years experience as consultant to the financial institution sector.
His experience includes a number of years with National Australia
Bank where he had responsibility for ATM roll out and security. He
has also served as an exectuve director of the Asian and Asia Pacific
chapters of the ATM Industry Association (ATMIA) and sat on the ATM
Fraud and Security Advisory Committee of the Australian Bankers
Association. It is clear that he is well qualified to give evidence as to
what would have been common general knowledge in the art at the
priority date.
Mr Gould is the managing director of Lockit Systems, the
Applicant Company. He is a licenced security consultant with 25
years experience in security management and security products
design. He holds a number of patents on various security products
and is also the inventor of the invention of the present application,
which is being marketed and sold under the trade name
RAMINATOR. The RAMINATOR won the Most Innovative Product
award from ATMIA in 2007. Mr Gould is also a member of ATMIA and
has given presentations at international fora on ATM security. Mr
Gould is also therefore equally well qualified to comment on the
common general knowledge in the art, although his views may not
be quite independent.
ONUS OF PROOF
The examination request for this patent application was filed on
25 November 2010. As a consequence, substantive amendments of
the Patents Act brought about by the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012 do not apply to the present
application. This includes the amendment to subsection 60 (3A) that
allows the Commissioner to refuse a patent application if satisfied
on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings
applies and the opponent must establish that it is clear or practically
certain that the patent is invalid (F Hoffman La Roche AG v New
England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283;
50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008]
FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics
Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106
at [17]).
CONCLUSION
All of the claims are clear and fairly based except for claim 16
which is not fairly based. Claim 29 is not novel and lacks an
inventive step. All of the other claims are novel and inventive.

I allow the applicant two months from the date of this decision in
which to propose suitable amendments to overcome the adverse
findings.
COSTS
In proceedings such as these it is usually the case that costs
follow the event. I see no reason to vary that approach on this
occasion. The opposition has been successful in relation to some of
the grounds. I therefore award costs according to Schedule 8 against
Lockit Systems (Aust) Pty Ltd.