Still stuck in the mud

Clearview Towing Mirrors Pty Ltd v Shane Robert Miles [2024] APO 11 (5 March 2024)

5 March 2024

Australian Patent Office

M. Umehara 

On 5 March 2024, the Australian Patent Office (APO) issued its decision in the opposition filed by Clearview Towing Mirrors Pty Ltd in respect of Australian patent application AU2020281026 (Opposed Application). Clearview had opposed the grant of the Opposed Application on the grounds of inventive step, novelty, sufficiency, support and clarity. The APO upheld the opposition only on the grounds of novelty (Claims 1 to 9) and inventive step (Claims 1 to 4 and 6 to 9), with claims 10 to 12 remaining.  Even though the applicant (Mr Miles) requested withdrawal of the patent application early in the opposition process, the opposition proceeded to hearing, ultimately resulting in a costs award against Mr Miles.   

The bigger picture 

This opposition isn’t the only patent dispute between the parties.  We recently reported on the Federal Court’s decision in MSA 4×4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd [2024] FCA 24.  Mr Miles is a director of MSA and is also the owner of the patent the subject of that dispute (which was exclusively licensed to MSA).  

Furthermore, the Opposed Application is one of seven related applications, some of which had been accepted and some of which have lapsed for failure to gain acceptance.  In February 2024, Clearview filed another opposition, this time to the grant of a divisional of the Opposed Application.  The Opposed Application itself lapsed for failure to pay the acceptance fees but was reinstated pursuant to an extension of time granted under s223 of the Patents Act 1990 (Cth). The Opposed Application then entered a state of lapse for a second time due to non-payment of the renewal fee, which was ultimately paid during the relevant grace period. 

So, at present there is a complex web of patents, applications and disputes between Clearview and MSA, all relating to the same field – storage systems typically installed in off-road vehicles.  Perhaps mindful of this broader context, the Commissioner in this opposition proceeding indicated that he would not consent to Mr Miles’ request to withdraw the Opposed Application without Mr Miles undertaking not to pursue in any further applications (whether already filed or not), the same, or substantially the same, invention as had already been opposed here.  Mr Miles did not provide the undertaking and so the hearing proceeded.   

Mr Miles filed submissions but no evidence in the opposition proceedings. It is therefore perhaps unsurprising that the opposition was successful, at least on novelty and inventive step grounds with respect to some of the claims.  Compounding this, the Commissioner awarded costs against Mr Miles.  However, the Commissioner indicated that the novelty and inventive step grounds could potentially be overcome through appropriate amendments and Mr Miles was granted a two-month window of time in which to propose suitable amendments. 

While the strategy of Mr Miles and MSA is unclear, this decision serves as a reminder that filing a patent application is not without potential downstream cost exposure, particularly in the presence of a motivated competitor, and there may be no quick way to withdraw a patent application without impacting your ability to file further patent applications to protect your invention. 

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