ABB EPT Construction Pty Limited v a. Goninan & Co Ltd
[1996] APO 27
•24 May 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 657639 in the name of ABB EPT Construction Pty Limited
Title: Cam mechanism for a system for discharge of bulk materials from vehicles
Action: Opposition by A.Goninan & Co Ltd and an objection to an application for an extension of time to serve evidence in support
Decision: Issued .
Abstract: Application refused. Opponent already allowed a short extension of time to avoid being shut out entirely. Where a short extension is granted in the absence of a proper case being made out, this in effect should end the particular period for serving evidence. It seems ludicrous that a party could be granted a further short period after having not made out a proper case when that party has already received a short extension of time after not earlier making out a proper case. If such an extension were granted then the period prescribed by the regulations for serving evidence in support would be a mere token one.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 657639 by ABB EPT Construction Pty Limited, Opposition thereto by A.Goninan & Co Ltd and an objection to an application for an extension of time to serve evidence in support.
background
Patent application No 657639 was filed on 14 September 1993 by EPT Pty Ltd who subsequently changed its name to ABB EPT Construction Pty Limited. The application was advertised as accepted on 16 March 1995. A.Goninan & Co Ltd filed a notice of opposition to the grant of a patent on 16 June 1995 and served a statement of grounds and particulars on 18 September 1995.
Evidence in support was due to be completed by 18 December 1995. However an application for an extension of time to serve evidence in support was filed on 11 December 1995. The applicant objected to such an extension and the matter was heard on 20 February 1996. The delegate issued a decision dated 21 March 1996 granting a limited extension to 15 March 1996 to validate evidence then served in the form of a statutory declaration by Leslie Smith.
On 14 March 1996, the opponent filed an application for a further extension of time to 15 June 1996 to serve evidence in support. The applicant objected to this application. The matter was heard in Canberra on 29 April 1996. The applicant was represented by Mr Graham Halford, patent attorney of Halford & Co, Sydney. The opponent was represented by Mr John Nicholas of counsel, assisted by Mr Laurie Dyson, patent attorney of Watermark, Sydney.
THE APPLICATION FOR EXTENSION OF TIME
The application provides the following grounds in support:
“Extensive discussions with four expert witnesses have taken place over the past six months and one declaration will be served on applicant’s attorneys on 15 March 1996. There will be at least two, possibly three declarations served to complete the evidence in support in this matter. One of the Declarants who resides in Brisbane has been frequently unavailable for interview and this has inevitably lead (sic) to delays. The other Declarants are in Melbourne and Adelaide, and this has caused further delays in arranging interviews, but which have now been conducted.
A study of the statement of grounds and the declaration to be served will reveal that a serious opposition is being dealt with.
Further time is required to finalise and formalise the evidence that has been collected from expert witnesses.”
EVIDENCE
At the hearing, Mr Nicholas provided me with copies of three statutory declarations which he indicated completed the opponent’s evidence in support of the main opposition. These declarations had been served on the applicant the week before the present hearing. Mr Nicholas also provided me with a copy of a statutory declaration by Kim O’Connell which he indicated provided evidence in support of the present application for an extension of time. This had been served on the applicant on 26 April 1996.
SUBMISSIONS
Mr Nicholas made the following points at the hearing.
In Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057, Burchett J. indicated that it is in the public interest that a serious opposition should be dealt with on its merits and should not be shut out due to a failure in procedure. A consideration should always be given to granting a short extension of time even where the application for such an extension is unjustified.
The opponent would only be applying for an extension of time until the date of the hearing as all evidence in support had now been served.
The applicant has provided no evidence that it had been unduly prejudiced by the delay in completing the evidence in support.
The nature of the evidence served establishes that a serious and substantial opposition is in train.
As the Smith declaration was already part of the opposition due to the delegate’s decision to grant a limited extension of time, the opposition will have to be decided. Therefore, a fairer result of such a determination would occur if all the available evidence is taken into consideration. A refusal of the present application for extension of time would shut that further evidence out.
The O’Connell declaration provides reasons for the delay in completing the evidence in support. These reasons include the fact that it has been difficult to schedule face-to-face interviews with experts in various capital cities other than Sydney.
The tests set out in Kent-Moore Corporation v. Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915 are not appropriate to the present case because, in Ferocem, Burchett J. indicated that the delegate got it wrong in Kent-Moore.
If the particulars are speculative in nature then the applicant can raise this issue at the substantive opposition hearing.
Mr Halford referred me to the written submissions he had provided in relation to the previous hearing in relation to an objection to an application for an extension of time. He also made the following points at the hearing:
In the Ferocem decision (supra), Burchett J. indicated that a short extension might be appropriate even where an application for an extension of time might be unjustified so that an applicant who may have assumed some extension would be granted would not be shut out entirely. In the present case, the previous extension was considered to be not justified by the delegate. Therefore, the opponent could hardly have assumed that another extension would be granted. Therefore, Ferocem does not apply.
The grounds relied on for the extension don’t provide sufficient reasons to justify any extension. Frequent unavailability of an expert in Brisbane can’t provide justification for such a delay. The opponent has already been provided with almost three months extension of time and this reason was put forward at the previous hearing. Given the ease of travelling from Sydney to Brisbane, such an excuse is not sufficient reason for an extension. If the opponent was genuinely having difficulty in contacting the expert from Brisbane, then the opponent could have provided detailed evidence of this. The opponent has not done so.
The only evidence actually served (up until 26 April 1996 when evidence in support was completed) is the declaration by Leslie Smith who lives in Adelaide. Therefore, the subsequent serving of a declaration by an expert in Sydney would seem to refute the notion that there was any difficulty in obtaining evidence from interstate experts.
The opponent has provided no further evidence over that provided in the previous hearing on the reason for the delays in completing the evidence in support.
Given the fact that the evidence in support had now been completed, that part of the public interest which deals with the potential protraction of the proceedings is no longer at issue but the private interests of the applicant are still relevant.
There is no real evidence as to why the initial three months was not sufficient time to serve the evidence in support.
In Kent-Moore (supra), the delegate indicated that factors which need to be taken into account in considering whether an extension of time is justified include the question of whether or not the extension is being sought to find evidence to support speculative or non-specific particulars. In the present case, the particulars in relation to the ground of obviousness are speculative and a cursory glance at the evidence which has now been completed indicates that it is attempting to support these speculative particulars. Ferocem has not overturned this particular part of the Kent-Moore decision.
DECISION
Regulation 5.10(2) enables the Commissioner to grant an extension of time in opposition proceedings. From regulation 5.10(5), I note that an extension must not be granted unless I am reasonably satisfied that the extension of time is appropriate in all circumstances.
The factors to be considered in relation to a request for an extension of time have been set out in Ferocem Pty Limited v Commissioner of Patents (supra), to which both parties referred me. From Ferocem, I understand that, while I should consider whether or not the person seeking the extension has made out a proper case justifying the extension, I should also consider not only the private interests of the applicant for the patent and the opponent, but also the public interests that whilst the outcome of proceedings should be correct and just, the proceedings should not be unduly protracted.
I think it is not really in dispute that the opponent has not made out a proper case to justify the extension. The O’Connell declaration provides little more detail in support of the extension than is provided in the application for extension of time, itself. The difficulties of obtaining evidence from interstate experts seems to me to be insufficient justification for a further extension of time. In this respect, the words of the delegate in the previous decision in relation to the earlier application for an extension of time are still appropriate:
“difficulties experienced in arranging face to face interviews with experts who are located in various capital cities in Australia, and in obtaining evidence from them are a fact of life in most opposition proceedings. The opponent did not volunteer any information as to the extent of the difficulties arising from arranging interviews with, or in obtaining evidence from the experts other than that they are located in different cities. There is no information on when these experts were contacted, how they had been contacted or their availability for interviews. I conclude that insufficient information has been provided to enable me to be satisfied that these difficulties constitute extenuating circumstances such as might provide a basis to justify an extension of time.”
At the hearing, Mr Halford pressed a point that he had made at the previous hearing. He argued that the tests in the Kent-Moore decision are still appropriate and particularly relevant to the present case where the particulars are speculative. I find that I am in the same position as the previous delegate in that I have already found the extension unjustified. Therefore I do not need to consider whether or not the tests in Kent-Moore are appropriate. If they are, they may provide further reason for me to come to the conclusion that the extension is unjustified. If they are not, I have still found that the extension is unjustified. For this reason, I believe that I do not have to decide this issue. However I would say that I do not believe that the Ferocem decision necessarily overrules these tests. The Ferocem decision indicates that these narrow tests should not be the only considerations taken into account when the Commissioner exercises any discretion under regulation 5.10(2).
Although I have found that a proper case has not been made out, I should also consider the other factors including the public interest consideration. Mr Halford has conceded that the proceedings will not be further protracted should I grant an extension of time in that the opponent has already served the remainder of its evidence in support. Certainly, according to the opponent, the outcome of the substantive opposition will be more correct if the extension of time is granted to allow the remainder of the evidence to be included in the opposition. The question I have to decide is whether or not these factors should outweigh the private interests of the applicant and the fact that the opponent has not made out a proper case justifying an extension of time.
In resolving this question, I note that the delegate in the earlier decision took the view that public interest considerations outweighed the fact that the opponent had not made out a proper case. This is in line with Ferocem where Burchett J. indicated that a short period should always be considered so that the opponent, who may have assumed some extension would be granted, would not be shut out entirely.
In the present case, Mr Halford has argued that the opponent could hardly have assumed some extension would be granted. However, I note that the present application for extension was filed before the previous decision was issued. Therefore the opponent would not have known of the contents of that decision. However, I note that the opponent has provided little extra evidence in support of the latest extension than was provided for the previous extension.
It seems to me that, in Ferocem, Burchett J was concerned that an opponent should not be shut out entirely. This is the reason he has given for considering whether some short extension should be allowed. In the present case, the opponent has already received an extension because of this. Therefore, the opponent will not be shut out entirely. Some evidence has already been served within the time allowed by the previous extension.
I do not think that the same reasoning should be used for allowing a second extension of time where the opponent has not made out a proper case. The opponent will not be shut out entirely.
Therefore, I believe in the present circumstances, the private interests of the applicant and the fact that the opponent has not made out a proper case outweigh the public interest considerations. The public interest will not be greatly compromised as the opponent has not been shut out entirely.
I think that the public interest would not be best served in the long run if I were to allow the present unjustified extension after the previous unjustified extension has been allowed. It seems to me that this would open up the door to in effect unlimited extensions being granted for short periods to validate each piece of evidence as it was served. This is clearly contrary to the intent of the procedures set down in the legislation and to the Ferocem decision. In Ferocem, Burchett J. did not grant a full extension of time. His reason for granting a limited extension was to allow whatever material that was already prepared to be served. There is no suggestion that any further extension would have been granted to allow other material associated with the court hearing to be subsequently served.
It seems to me that, where a short extension is granted in the absence of a proper case being made out, this in effect should end the particular period for serving evidence. It seems ludicrous that a party could be granted a further short period after having not made out a proper case when that party has already received a short extension of time after not earlier making out a proper case. If I should follow the path of granting such an extension then, it seems to me that the period prescribed by the regulations for serving evidence in support would be a mere token one.
I refuse to allow the application for an extension of time.
As a consequence of this decision :
the provisions of regulation 5.8(2) now apply, with the period for serving evidence in answer commencing from the date of this decision, and
the material served on the applicant by the opponent during the week of 22 to 26 April does not constitute evidence in support in the opposition.
COSTS
At the hearing, Mr Nicholas indicated that the opponent had agreed to pay the costs of the applicant up to and including the Friday before the hearing but not the costs of the hearing itself. However, in decisions of this nature, costs normally follow the event. As A.Goninan & Co Ltd was unsuccessful in obtaining an extension of time, I award costs up to and including the hearing against it and for the applicant , ABB EPT Construction Pty Limited.
R Hallett
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Halford & Co. Sydney
Patent attorneys for the opponent : Watermark, Sydney
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