Abacus Engineering Limited v John Cananzi and Cananzi Hydropneumatics

[1983] APO 6

In the Matter of the Patents Act 1952

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In the Matter of an Application for Restoration of Patent No. 494746 by ABACUS

ENGINEERING LIMITED

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In the Matter of a Notice of Opposition thereto by JOHN CANANZI and CANANZI HYDROPNEUMATICS

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In the Matter of an Objection to said Notice of Opposition.

DECISION OF AN ASSISTANT COMMISSIONER OF PATENTS.
        An application under section 97 of the Act for the restoration of patent No. 494746 by Abacus Engineering Limited was advertised in the Official Journal on 4 November, 1982.   On 4 February, 1983 the Patent Office received what purported to be a Notice of Opposition from Cleary, Ross & Doherty, solicitors, acting on behalf of John Cananzi and Cananzi Hydropneumatics.   In a subsequent letter dated 16 February, 1983, Edwd. Waters & Sons, Patent Attorneys for Abacus Engineering Limited, informed the Commissioner that they objected to the alleged Notice of Opposition.   The relevant part of this letter reads as follows:

"It is our respectful submission that the letter of 4th February from Messrs. Cleary, Ross & Doherty which purports to be Notice of Opposition is not in substantial compliance with Form 12 in the First Schedule to the Patents Regulations.   In this respect, we simply draw attention to Regulation 90 which, whilst not insisting upon strict

compliance with the aforesaid Schedule, does clearly nonetheless call for substantial compliance.   If our sub‑

missions are to be upheld, and it is respectfully suggested that the Office cannot really do otherwise, then it necessarily follows that the Notice of Opposition of 4th February must in effect be treated as null and void and so the opposition accordingly quashed."

A hearing to determine the issue "that the Notice of Opposition of 4 February must be treated as null and void" took place in Canberra on 29 March, 1983.   Abacus Engineering Limited was represented by Mr. W. Dancer, Patent Attorney, of Edwd. Waters & Sons; Mr. G. Johnson, instructed by Cleary Ross & Doherty, solicitors, appeared on behalf of John Cananzi and Cananzi Hydro‑
pneumatics.
        The alleged Notice of Opposition which is the subject of the objection took the form of a letter, reproduced as follows:

"4th February, 1983

The Registrar of Patents,

Patents Sub‑office,

150 Lonsdale Street,

,3000

Dear Sir,

Re: Application for renewal of Patent No. 494746

We advise that we act on behalf of John Cananzi and Cananzi Hydropneumatics Pty Ltd both of 285 Somerset Road, Campbell‑ field.   Our clients wish to give notice of opposition to Application for the restoration of the abovementioned trade mark.   The grounds of the objection are as follows:

A.The omission to pay the prescribed fee was not unintentional;

B.Undue delay had occurred in the making and prosecution of the application for restoration;

C.The Restoration of the patent would be improper and would be injurious to the opponents and to the public;

D.The said letters patent are and were at the date of the Applications invalid.

We note that the appropriate fee on the Notice of Opposition was paid on the 2nd February, 1983.

Yours faithfully,

"

It is quite clear that this "Notice" departs in a number of respects from the standard format of Form 12 as prescribed in Regulation 41.   Mr. Dancer made the following specific points:

1.It is not a document within the meaning of the Act, or, if it is a document it is not a notice of opposition, or, if it is a notice of opposition it is null and void.

2.The "notice" is presented, not by John Cananzi and Cananzi Hydropheumatics, but by Cleary, Ross and Doherty.   Cleary, Ross and Doherty is not a person, or an interested person, within the meaning of the Act.

3.The letter represents one notice on behalf of two opponents, which must be regarded at least as an irregularity.

4.The letter represents an intention which has still to be put into effect; the reference to "wish to give notice" does not in fact constitute the giving of notice.

5.The reference to "trade mark" is obviously a mistake.

6.The "notice" contains no indication of facts (as prescribed on Form 12) on which the opponent's interest is based.

7.No copy of the notice was served on Edwd. Waters & Sons, the attorneys and address for service for the patentee.

8.The notice is not dated as prescribed.

9.The notice is not signed by a legal practitioner but merely initialled.

In support of his submission Mr. Dancer cited Bristol Laboratories Inc. v. Chas. Pfizer and Co. Inc. AOJP Volume 30 No. 23 p.1334.   This decision, by the then Acting Deputy Commissioner of Patents, concerned a request to amend a Notice of Opposition by adding an extra ground of opposition, which request was refused.   I do not see that this decision has any bearing on the present matter.
I was also referred to R. v. Commissioner of Patents, Ex Parte Weiss (1939) 61 CLR 240. This case also concerned a notice of opposition (to grant) which had been challenged on the grounds that, firstly, the notice was in the name of a firm and therefore not in the name of a person within the meaning of the Act, and secondly that in any event the opponent had no locus standi. The Full Bench of the High Court considered the Deputy Commissioner's decision which had granted leave to amend the notice by changing the name of the opponents, and had held that the opponents did have locus standi. Latham CJ. remarked "I know of no authority for allowing any person to oppose other than simply as a person" and Dixon J. stated "It is needless to add that in a proper case irregularity in a notice may justify dismissal of the opposition".
        However it is important for these quotations to be placed in correct context.   Thus the above quotation from Dixon J. occurs in a passage which reads:

"To make an objection in the firm's name was irregular.   The firm‑name is the description of the partners acting in conjunction for the purposes and within the scope of the partnership.   It may be conceded that, not only does it insufficiently identify the individuals constituting the partnership, but it indicates an association of persons acting in a particular capacity or right.   But I do not think that the misdescription or misnomer involved in the use of the partnership name makes the notices of opposition mere nullities.   Under the power to make regulations contained in sec. 108, it would, I think, be possible to authorize the use of the firm‑name in a notice of opposition.   In fact the regulations prescribe a form requiring the full names of the opponents.   But the regulations also confer a power of amendment.   A firm‑name is, after all, a reference to persons, and, notwithstanding its inadequacy and the limitation of capacity or legal relationship implied, it notifies a real intention to oppose by real persons.  In my opinion it forms a sufficient foundation to entitle the commissioner to proceed.   It is needless to add that in a proper case irregularity in a notice may justify dismissal of the opposition.   In the present case, however, it has been thought right to allow an amendment and thus to make the notice regular.  

The second ground relied upon by the prosecutor is that the opponents have no locus standi.   But again I think that this objection does not go to the validity of the notice of opposition as a proceeding which the commissioner must hear and decide."

The theme "... notifies a real intention ... forms a sufficient foundation to entitle the Commissioner to proceed" is repeated by Evatt J. when he states:

"It is sufficient that a de‑facto notice is given.   If this is so, the commissioner is intended by sec. 57 to have jurisdiction to determine the case and, in the course of doing so, to determine whether the de facto notice given complies with sec. 56 and also to determine whether, if it does not so comply, it can or should be amended."

These words by Evatt J. were cited with approval by Kitto J. in Kaiser Aluminium and Chemical Corporation v. Reynolds Metal Co., 120 CLR 136, (1972) RPC 648, which again concerned a notice of opposition (to grant) in which no locus standi was indicated. As Mr. Johnson on behalf of the present opponents pointed out, not only does Kitto J. dispose of the absence of indicated locus standi, but he neatly expostulates the proper approach to Form 12 generally, with the words:

"The respondent, however, contends that even if the appellant has such an interest as makes it a competent opponent, the evidence which establishes the interest is inadmissible because the notice of opposition did not state the relevant facts.   An analogy was suggested between a notice of opposition under the Patents Act and a notice of objection to an assessment under the Income Tax Assessment Act 1936 (Com.).   In my opinion there is no such analogy, for the former Act contains no provision corresponding with section 190(a) of the latter.   The argument against admitting the evidence rests upon reg. 20 of the patents Regulations, which provides that a notice of opposition to the grant of a patent shall be in accordance with Form 12.   That form contains the words: "My interest in this matter is based on the following facts ‑"; but there is nothing in the Act or the regulations to make a statement of facts sufficient to give a locus standi a condition precedent to the right of objection or the right of appeal.   On the contrary, section 59 gives "a person interested" an unqualified right to oppose the grant of the patent by notice in writing lodged at the Patent Office.  Regulation 20 would, I think, be inconsistent with the Act and there‑

fore beyond the regulation‑making power in section 177 if it meant that unless Form 12 were complied with to the extent of stating the facts upon which the opponent's interest depends a person in fact interested should not be entitled to oppose the grant by lodging the notice. The terms of section 59, by which the right of opposition is limited to a right to oppose "by notice in writing lodged at the Patent Office", require no more for a valid opposition than what Evatt, J., called "a de facto notice": R. v. Commissioner of Patents Ex parte Weiss [1939] ALR 101, at p.107; 61 CLR 240, at p.261. The provision in Form 12 for stating the facts as to interest is to be understood, in my opinion, as directory only, with the result that the absence of the statement does not make the notice something less than a notice of opposition, whatever may be the effect as regards costs."

While Regulation 41 stipulates Form 12, Regulation 90 indicates that substantial compliance, rather than strict compliance, is all that is required. As Mr. Johnson pointed out the question of "substantial compliance" with forms occurs in other areas of law. He drew my attention to "Crowley v. Templeton (1914) 17 CLR 457 dealing with the (Victorian) Transfer of Land Act 1890 in which at p.466 Isaacs J. said:

"Slavish adherence to the forms is not demanded.   Technical and immaterial departures from them do not deprive the dealing of efficacy.   Substantial compliance is sufficient. But a document offered for registration must show at least substantial compliance on its face.   The Act requires it to be in writing, and the writing does not comply with the requirements of the Statute unless those it affects or who are to act upon it, including the Registrar of Titles, whose duty it is to register it, can see from the document itself, when fairly read, that it is an instrument made in pursuance of the Act.   Any other rule would introduce endless confusion and risk."

and also to The Perpetual Executors and Trustees Association of Australia Limited v. Hasken (Registrar of Titles) (1912) 14 CLR 286 dealing with the same Act in which at p.289 Griffith, CJ. stated:

"For the purpose of facilitating the carrying out of that scheme certain forms of instruments were given in the Schedules to the Act, but the Act nowhere said that these forms should be used precisely as given.   On the contrary, the forms may be altered and modified, as I shall show.  Forms of this sort, like forms for use in judicial proceed‑

ings, are good servants but bad masters, a proposition which is sometimes ‑ too often indeed ‑ forgotten."

In the light of these authorities, it is clear that the nine specific objections raised in regard to the alleged "Notice" can readily be disposed of. Neither the Patent Office nor, more significantly the patent attorneys for the patentee, had any difficulty in recognising that the letter dated 4 February, 1983 was intended to be a Notice of Opposition.   It is readily apparent who the opponents are, and on what grounds they oppose.   The letter bears a date and is authorised by solicitors acting on behalf of the Opponents.   No further comment is called for in relation to points 1‑5, 8 and 9.   Mr. Johnson on behalf of the opponents conceded that the document is silent on the matter of interest, or locus, but on the authority of Kaiser Aluminium and Chemical Corporation v. Reynolds Metal Co., no such indication of interest is required at this stage.   Point 7 might have been a more serious matter, but in response to claims by Mr. Johnson, Mr. Dancer has conceded that a copy of the Notice was, in fact, received by him, and accordingly he withdrew this particular objection.
        I dismiss the objection that the Notice of Opposition be treated as null and void and award costs against the patentee.

(G.J. BAKER)