ABB EPT Construction Pty Ltd v a. GONINAN & Co Ltd
[1996] APO 21
•21 March 1996
official notice
decision of a delegate of the commissioner of patents
Application : No.657639 in the name of ABB EPT CONSTRUCTION PTY. LTD.
Title: CAM MECHANISM FOR A SYSTEM FOR DISCHARGE OF BULK MATERIALS FROM VEHICLES.
Action: Opposition by A. GONINAN & CO. LTD. and an application for an extension of time under Regulation 5.10 (2) to serve evidence in support.
Decision: Issued .
Abstract : No proper case for the extension of time sought was made out. A limited extension of time granted to validate the service of evidence already served..
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patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 657639 by ABB EPT CONSTRUCTION PTY. LTD., Opposition by A. GONINAN & CO. LTD. and Objection to an extension of time under Regulation 5.10 (2) to serve evidence in support of the Opposition.
background
Patent application number 657639 was filed on 14 September 1993 in the name of EPT PTY. LTD. who subsequently changed their name to ABB EPT CONSTRUCTION PTY. LTD. The application is a patent of addition to patent number 649883. It was advertised accepted on 16 March 1995. A. GONINAN & CO. LTD. filed a notice of opposition on 16 June 1995 and served a statement of grounds and particulars on 18 September 1995.
Evidence in support was due to be served by 18 December 1995. An application for an extension of time until 18 March 1996 in which to serve evidence in support was made by A. GONINAN & CO. LTD., and objected to by ABB EPT CONSTRUCTION PTY. LTD. The matter was heard in Canberra on 20 February 1996.
Mr G. W. Halford, patent attorney of Halford & Co., Sydney, represented the applicant, and Mr. L. J. Dyson, patent attorney of Watermark, Sydney, represented the opponent.
On 15 March 1996, the opponent served its evidence in support.
THE APPLICATION FOR EXTENSION
The application for extension of time stated that the grounds for extension were:
“As is indicated in the Statement of Grounds, reliance is being placed upon the expert evidence in relation to general knowledge in Australia of rail vehicles and specifically the bulk material discharge mechanisms used in rail vehicles in Australia.
At least two Australian experts have been identified by our advisers as being potential witnesses.
Our patent attorneys, Watermark are under our instructions, coordinating preparation of evidence in support with our solicitors Allen Allen & Hemsley in the interviewing of, and collection of evidence from expert witnesses.
Further time is required to conduct the necessary interviews and prepare formal evidence from these interviews, and this coupled with the prospect of the Christmas period and the legal vacation intervening during January 1996, requires further time by extending the deadline to 18 March 1996.”
SUBMISSIONS
The main points of Mr Dyson’s submissions at the hearing can be summarised as follows:
it was necessary to make extensive inquiries amongst GONINAN employees and ex-employees concerning bulk material discharge systems. Thereafter inquiries were made concerning independent experts.
a number of experts based in Brisbane, Adelaide, Melbourne and Perth have been identified and contacted. The work involved in retaining and interviewing the expert witnesses is being handled by the opponent’s solicitors, Allen Allen and Hemsley in coordination with Watermark. Difficulties are being experienced in arranging face to face interviews with the experts due to the geographic spread of their location and in obtaining evidence from them.
the experts have extensive experience in railway engineering and have undergone preliminary interviews and have been furnished with a large package of material relating to this matter.
a serious opposition is foreshadowed.
Mr Dyson referred me to Ferocem Pty. Ltd. v. Commissioner of Patents (1994) AIPC 91-057.
The main points raised by Mr Halford at the hearing can be summarised as follows:
the onus is on the applicant seeking the extension to justify it.
Mr Halford referred me to the Decision in Kent-Moore Corporation v. Environmental Products Amalgamated Pty. Ltd. (1992) AIPC 90-915.
the vague and unhelpful nature of the application is pervasive throughout. The opponents have not provided any hard facts surrounding the circumstances for the extension of time.
the opponents have not provided any reason why evidence was not going to be ready by 18 December 1995.
the opponents have the State Rail Authority contract and any delays in the opposition are to its advantage.
delays will prejudice the applicant in its negotiations regarding compensation for exploitation and will encourage exploiters in other states.
costs should be awarded to the applicant.
DECISION
The requirements for granting an extension of time to serve evidence are set out in regulation 5.10. In particular, subregulation 5 requires:
The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a) ...
(b) ...
(c) in either case:
(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
From this, I note that before I can grant an extension of time I must be reasonably satisfied that the extension of time is appropriate in all the circumstances.
In determining what factors must be considered I am guided by the recent decision of the Federal Court Ferocem Pty. Ltd. v. Commissioner of Patents, (1994) AIPC 91-057. In this decision Burchett J. said:
“The determination of an application for an extension of time under reg. 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patent Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office. But they also include, as Kitto J. pointed out in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 143, “the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be.” This proposition was cited, by Bowen CJ in Vangedal-Nielsen [33 ALR 144] (at 150), where he also set out some of the considerations involved upon the application for an extension of time.”
From this judgement the considerations relevant to an extension of time can be thus stated generally as follows:
a) The Commissioner, before allowing an extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension; and
b) The Commissioner must consider not only the private interests of applicants for patents and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unduly protracted.
I will now consider the grounds upon which the request for extension of time has been made. The request essentially sets out two matters:
the opponent has identified at least two Australian experts as being potential witnesses. No information has been provided as to how many experts there actually are, and what their roles are in preparing the evidence in support. There is no indication when these experts were contacted or when a search was initiated for these experts.
further time is required to conduct the necessary interviews and prepare formal evidence from these interviews and this coupled with the prospect of the Christmas period and the legal vacation during January 1996, requires further time. There is no information as to why the interviews and the preparation of formal evidence could not be completed before the deadline of 18 December 1995. I note that the Christmas holidays and the legal vacation are after the deadline for serving evidence in support. Therefore, they cannot be a reason for granting an extension of time although they may be a factor in deciding how much extension of time to give.
In my view the grounds do not seem to justify an extension of time. There is nothing in the request which is supportive of the opponent moving expeditiously to completing its evidence. Indeed the request amounts to little more than “We request an extension of time because we need more time.”
Turning now to the submissions made by Mr Dyson at the hearing, I would comment:
the need to make extensive inquiries amongst GONINAN employees and ex-employees concerning bulk material discharge systems is what would be expected in any case. According to Mr. Dyson, the inquiries had been conducted over the past 6 months after the filing of the notice of opposition. However, I am unable to comment on the reasonableness of the time required because of a lack of details regarding any difficulties encountered in collecting the evidence.
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.
The opponent has not provided adequate reasons as to why the gathering of evidence could not be completed before the end of the three month period. For example, the opponent did not explain whether it was going to use any of its employees and ex-employees as expert witnesses; also it did not say whether any of the independent experts it approached did not want to be involved in the opposition.
Consequently, I do not think that the opponent has provided justification for an extension of time. However, I note the comments of Burchett J. in Ferocem (supra):
“... Indeed, even where an application for a particular period, such as the two months sought here, is regarded as unjustified, it seems to me a decision maker, having a discretion of the kind conferred by Regulation 5.10, should always consider whether some short period ought to be allowed, so that an applicant who may have assumed some extension would be granted will not be shut out entirely from presenting evidence that may be immediately available.”
Bearing this in mind, I consider that a limited extension of time, solely for the purpose of validating the service of the evidence in support which was available and served on 15 March 1996, is appropriate in all circumstances.
I therefore grant an extension of time until 15 March 1996.
COSTS
Normally in actions of this nature, costs follow the event. In this case, the applicant, ABB EPT CONSTRUCTION PTY. LTD., urged that it be awarded costs in view of the deficient nature of the application for extension. I agree, as I consider the reasons given in the request for an extension of time to have been manifestly inadequate.
I award costs against the opponent, A. GONINAN AND CO. LTD. and in favour of the applicant ABB EPT CONSTRUCTION PTY. LTD.
Jacob Elijah
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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