Wrays is pleased to advise of its recent success in defending one of its client’s patent applications in opposition proceedings before the Australian Patent Office (Desaln8 Pty ltd v Crisalis International Pty Ltd [2020] APO 30 (24 June 2020)).
The opposition hearing was notable because it was held just as COVID-19 lockdown measures were being implemented. The hearing was initially set to be heard in person in Canberra but to comply with social isolation obligations this was changed to a video conference and later, because of technical difficulties on the day, the parties had to resort to a hearing by telephone. All parties were to be congratulated on remaining flexible in rapidly changing circumstances and maintaining professionalism under trying conditions. Well, the show must go on!
The invention of the opposed application resided in a groundwater desalination system having a production borehole in an aquifer for withdrawal of groundwater and one or more reinjection boreholes spaced apart from the production borehole at a distance and a direction relative to the production borehole to minimise dipole flow of concentrate back to the production borehole. The boreholes were also provided with seals to inhibit mixing of water above and below the seals so as to prevent oxygen or oxygenated water from mixing with the groundwater. In this way, the system was configured to continuously produce a stream of desalinated water from groundwater over an extended period of time without subsequently recapturing concentrate produced by the desalination process, and to ensure continuous operation by minimising fouling due to oxygen ingress.
The Opponent pressed all available grounds of opposition but none were made out.
In its case against novelty, the Opponent relied on prior art documents and its prior use of a groundwater desalination system at Flemington Racecourse (home of the Melbourne Cup) and the dual borehole system it developed to solve the problems of concentrate reinjection disturbing the silt near desalination systems operating via a single borehole. The evidence showed that the reinjection boreholes used by the Opponent were pre-existing and upstream of the production boreholes and consequently did not teach minimisation of dipole flow. Additionally, the Opponent’s boreholes were not provided with seals to prevent oxygen or oxygenated water from mixing with the groundwater. None of the claims were held to have been anticipated by the prior art.
The claims were also found to be inventive in light of the common general knowledge alone and in light of the prior art.
Grounds under Sections 40(2) and 40(3) were also not made out (Disclosure/Support/Best Method).
The Opponent also pressed a lack of entitlement to the application on the basis that the inventor was a director of the Opponent up until 7 June 2010 and was aware of the installations at Flemington Racecourse, Victoria, including the dual borehole systems, and was later in possession of confidential information about the dual borehole systems. Beyond the information provided regarding the systems installed at Flemington Racecourse, however, the Opponent was unable to provide any further evidence that the Opponent or one of its employees were responsible for the ideas that constituted the inventive concept. Consequently, this ground of opposition also failed.