Rio Tinto wins ok for mining patent on appeal
Intellectual Property June 20, 2018 11:32 am By Cat Fredenburgh | Melbourne

Rio Tinto subsidiary Technological Resources has won its appeal of an IP Australia ruling that rejected its mining patent after a challenge by the Commonwealth Scientific Industrial Research Organisation.

Justice John Middleton ordered Tuesday that the ruling by an IP Australia delegate rejecting the patent application be reversed and the opposition by the CSIRO be refused.

The appeal was uncontested.

The judge did not make an order on the costs of the Federal Court or IP Australia proceedings.

Technological Resources filed the appeal April 17 after Delegate Isaac Tan refused the patent application for a method of separating mined material, calling it a “purely logistical process”.

The Rio Tinto IP unit claimed the patent referred to a method of manufacture and an apparatus that could identify and separate material, such as ore, that had been mined on a bulk basis. The process involved sorting material to draw out high and low grade material from waste products.

In upholding the CSIRO’s opposition, the delegate said that all claims in the patent were “no more than mere working directions”, falling short of the proposed method of manufacture.

The delegate said the patent lacked novelty or an inventive step and was “obvious in light of common general knowledge”.

Delegate Tan found that 15 claims of the proposed patent lacked novelty in light of a CSIRO scientific article, that 23 of the claims lacked novelty in light of a 1980 publication, and that the remainder of the claims lacked inventive step in light of both publications.

He also agreed with the CSIRO that the patent was obvious in light of common general knowledge related to bulk and particle sorting.

“The claims of the opposed application are directed towards the sorting or upgrading of mined material which, as set out in the evidence, is an old result. All of the claims steps which aim to achieve this old result are described with a high degree of generality,” he said.

“All of the claims relate to conventional steps which are either obvious on the face of the claim, or would simply be a matter of routine.”

The delegate found another 65 claims were not novel or inventive in light of a UK patent application for a bulk radioactive ore sorter.

The application for the patent was filed in 2011, and CSIRO’s objection was lodged in 2015.  Both objectors were awarded costs in separate opinions.

Technological Resources was represented in its appeal by MinterEllison.

CSIRO was represented by Ian Horak, counsel and Tracey Webb with Allens Patent & Trade Mark Attorneys.

The case is Technological Resources Pty Limited v Commonwealth Scientific and Industrial Research Organisation.

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Cat Fredenburgh

Cat Fredenburgh has been covering legal news for 12 years. She was previously Editor-in-Chief at US legal news publication Law360. She is the Co-Founder of Lawyerly.