Anthony Charles Worrallo v Daniel W Hales and LOIs R Hales - [1992] APO 59

official notice

decision of a delegate of the commissioner of patents

Application : No. 516018 in the name of ANTHONY CHARLES WORRALLO

Title : Improved Locking Device

Action : S.97(2) Application for Restoration and
Opposition thereto by DANIEL W HALES and
LOIS R HALES

Decision : Issued . Patent restored.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent No. 516018 by ANTHONY CHARLES WORRALLO, Application for Restoration and Opposition thereto under section 97(3) of the Patents Act 1952 by DANIEL W HALES and LOIS R HALES.

background

Patent no. 516018 for an invention entitled "Improved Locking Device" was advertised accepted on 14 May 1981 and was sealed on 9 November 1981. The patent ceased in 1989 due to the non-payment of a renewal fee. On 23 March 1990 the patentee ANTHONY CHARLES WORRALLO (Worrallo) applied under section 97 of the Patents Act 1952 for restoration of the patent, and this application was advertised on 6 September 1990.

DANIEL W HALES and LOIS R HALES (Hales) jointly lodged a notice of opposition to the restoration on 6 December 1990. Evidence-in-support, comprising one declaration by Peter Chamerlayne Dummer, was lodged on 15 March 1991, and evidence-in-answer, comprising one declaration by Douglas Charles Carter, was lodged on 15 March 1991. Evidence-in-reply, comprising one declaration by Daniel W Hales, was lodged on 2 July 1991 following the grant of one extension of time. On 19 September 1991 the opponents, through their attorneys, Peter Maxwell & Associates, advised that no further evidence would be filed and requested that the matter be set down for hearing.

On 20 September 1991 Worrallo applied under regulation 59 of the Patents Act 1952 for special leave to lodge further evidence. The application was accompanied by 2 declarations by Douglas Charles Carter and Anthony Charles Worrallo. The application for special leave was opposed by Hales, but in a decision issued on 20 May 1992 the delegate of the Commissioner allowed the application. On 26 June 1992 Hales, through their attorneys, advised that they would not be filing any evidence-in-answer to the evidence which was admitted as a result of this decision.

A hearing of the section 97(3) opposition was held in Canberra on 6 August 1992. At the hearing Worrallo was represented by Mr Douglas Carter, patent attorney of Carter Smith & Beadle and Hales were represented by Mr Peter Maxwell, patent attorney of Peter Maxwell and Associates.

history of the patent

The dates and events set out below were derived from Office records, the material on file concerning the application for restoration and the evidence lodged by the parties in respect of this action. As there was no dispute, I accept these dates and events as facts.

Date Event

28 April      1989 Annuity on patent no 516018 due.
28 October         6 months "grace period" for payment ends.
15 February    1990 Advertisement of ceasing appears in AOJP.
14-15 March        Worrallo requests status report from Cowie,
                  Carter & Hendy (CC+H).
16 March           CC+H sends schedule to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Anthony Charles Worrallo v Daniel W Hales and LOIs R Hales

Details

AGLC: Anthony Charles Worrallo v Daniel W Hales and LOIs R Hales [1992] APO 59
Case: [1992] APO 59
Decision Date: 14 October 1992

CaseChat Overview and Summary

The matter involved an application by Anthony Charles Worrallo for the restoration of a patent that had lapsed due to non-payment of a renewal fee. Daniel W Hales and Lois R Hales opposed the application. The application was for patent number 516018, titled "Improved Locking Device." The dispute centred on whether the failure to pay the renewal fee was unintentional and whether there had been undue delay in making the application for restoration.

The legal issues revolved around the interpretation of "unintentional" failure to pay a renewal fee and the determination of undue delay in applying for restoration. The court had to consider the evidence and submissions from both parties, including declarations and exhibits, to decide if the failure was unintentional and if the delay was undue. Additionally, the court needed to determine if the Commissioner's discretion should favour the opponent, considering public interest and potential protection for those who had used the patent while it was lapsed.

The court found that the failure to pay the renewal fee was unintentional as there was no clear evidence of a deliberate intention by the patentee not to pay the fee. The court held that the fault in the computer system did not necessarily mean the failure was intentional. Furthermore, the court concluded that the delay in applying for restoration was not undue, as the application was filed approximately five weeks after the official advertisement of the patent ceasing, and the circumstances did not justify a longer period of delay. The court found that all conditions precedent for the restoration of the ceased patent were satisfied, and the Commissioner's discretion in favour of the opponent was not relevant. The court also noted that the provisions of section 98 covered the protection of those who had availed themselves of the patent while it was ceased.

In conclusion, the court restored the patent, subject to any appeal being made, and awarded costs against Hales.

Orders