IP Spotlight 9 February 2021

AN OPPOSITION UPDATE FROM IP AUSTRALIA CCL SECURE PTY LTD V DE LA RUE INTERNATIONAL LIMITED [2020] APO 56

The present case relates to an opposition filed against Australian patent application 2014266991 (the Opposed Application) filed by De La Rue International Limited (the Applicant). The Delegate of the Commissioner of Patents was Mr. Xavier Gisz. The Opponent was CCL Secure Pty Ltd. THE CLA IMED I NVENT ION The invention relates to security documents having optically variable effect generating relief structures on either first and/ or second sides of the document, wherein the optically variable effect generating relief structures are formed using a particular cast-cure process common to both sides of the security documents. LACK OF CLAR I TY The Opponent objected to the term “common cast-cure”, based on: (1) not being a term of the art and (2) meaning actually “commonly used cast-cure process”. In reply, to overcome the objection, the applicant clarified, relying on the term as used in the specification, that the cast-cure process is a single process common (i.e. one and the same) to all relief structures of the security document. LACK OF I NVENT I VE STEP The citation WO2008/031170 provided by the Opponent was thrown out. It did not prove lack of inventive step; however, the Delegate independently raised Australian patent 2010294467 against claim 7. The Delegate reaffirmed that the right question is: was it obvious? - Not whether it was simple or complex to arrive at the invention. Claim 7 was considered inventive because: (1) no evidence was presented that the subject matter of claim 7 could be created using only routine steps and (2) it presents complexity to form optically variable relief structures on both sides of the document in the light of no conventional security document having relief structures on both sides. GROUNDS OF OPPOS I T ION The grounds of opposition were lack of clarity and lack of inventive step.

OUTCOME AND COSTS The opposition was, at least partially, successful because at least claim 7 was considered inventive by the Delegate. The Delegate in the final conclusions of the decision gave the applicant two months from the date of the decision to propose suitable amendments. However, the Delegate considered that the success should be assigned to the Delegate, because the Delegate raised the relevant prior art - Australian patent 2010294467. This resulted in the Delegate not awarding all Costs; instead, only a portion of the costs up to acceptance of particular amendments were awarded. With respect to the potential amendment the applicant could file, a suitable amendment would be to amend all independent claims to incorporate the relevant integer(s) of the claim that has been considered new and inventive for the patent to proceed to grant. In particular, the suitable amendment would consist in including the content of claim 7 into sole independent claim 1. This particular amendment would limit the scope of protection of the patent to a method for manufacturing a security document having a plurality of optically variable generating relief structures on both surfaces of the security document. The applicant has up to 21 February 2021 for proposing to the Delegate a suitable amendment. Upon conducting a patent search at the Australian Patent Office’s patent search facility, it is noted that no filing of an amendment have been published at the date of this article. KEY CONCLUS IONS 1. Always clarify in the description of the invention, a word that has several meanings, to confirm its intended use to remove ambiguities during claim construction. 2. Allowing a Delegate to submit relevant prior art during an opposition is potentially detrimental to the opponent’s cost recovery. 3. In the assessment of inventive step, the correct question is not whether it was simple or complex to arrive at the invention but whether the invention as claimed was obvious.

PETER HILLE Senior Associate

8 | wrays.com.au

wrays.com.au | 9