Anthony Joseph Griffin v Thea ROSENBAUM

[1994] APO 57

official notice

decision of a DEPUTY commissioner of patents

Application        :    Nos. 639914, 639916, and 640451 in the name of Anthony Joseph GRIFFIN

Title:    Voltage Regulating, Load Levelling and Load Transfer Device for Single Phase AC Electric Railways, using Batteries;

Electronic Three-Phase to Single-Phase Power Converter; and

Control Scheme for the Adaptive Protection and the Control of Feeder Circuit Breakers on an Electric Railway.

Action:    Extension of time for serving evidence-in-answer, and objection thereto by Thea ROSENBAUM (the Corporate Counsel of the State Rail Authority of New South Wales).

Decision:    Issued            .

Abstract:    Extension of time granted subject to terms limiting the scope of the evidence to be served.

Applicant had sought documents under Freedom of Information legislation, from the opponent (his employer). Many documents were not supplied to the applicant within the time for serving evidence; some were only supplied the day before the hearing. Costs awarded against the opponent.

patents act 1990

decision of a DEPUTY commissioner of patents

Re:Patent Application Nos. 639914, 639916, and 640451 by Anthony Joseph GRIFFIN, requests for an extension of time for serving evidence-in-answer, and objection thereto by Thea ROSENBAUM

background

Patent applications 639914, 639916, and 640451 by Anthony Joseph GRIFFIN were each opposed by Thea ROSENBAUM, the Corporate Counsel of the State Rail Authority of New South Wales. The ground of opposition against all three applications is that the nominated person is not entitled to the grant of a patent. The particulars in support of the opposition state:

"The applicant for the standard patent, Mr A Griffin, was at all relevant times an employee of State Rail Authority of New South Wales ("SRA") and a crown employee. Mr Griffin is not entitled to grant of a patent for the invention as the invention was made in the course of his employment with SRA. SRA hereby asserts its rights as owner of the invention in opposing the grant of a patent."

Thus the opponent represents the applicant's employer.

The applicant previously obtained an extension of time for service of evidence in answer, to 17 July 1994. He subsequently sought a further extension of time, to 17 October 1994, which the opponent has objected to. The matter was set for hearing on 27 September 1994. The applicant was represented by Mr A Cowle (patent attorney of Davies Collison Cave); the opponent was represented by Mr R MacKinnon (of solicitors Sly & Weigall).

A major factor in the request for an extension of time is the matter of a request under Freedom of Information legislation (FOI). The applicant requested copies of certain documents from the State Rail Authority, relating to his duties and projects on which he worked. That request was made on 31 March 1994 - 17 days before the end of the initial period for serving evidence-in-answer. Subsequently some material was supplied to the applicant, which he served as evidence. Later (and after the opponent had objection to the extension) further material was supplied to the applicant, which also was served as evidence. Finally, the last of the material was apparently supplied to the applicant the day before the hearing (although some material was not supplied, being subject to exemption under the FOI legislation by way of legal professional privilege). The evidence shows that there were delays in responding to the FOI request caused by (inter alia) staff turnover, and temporarily misplaced files. During the hearing, the opponent conceded that the initial response to the FOI request did not include all the material sought.

After some discussion at the hearing, the opponent acceded to the extension of time sought being granted both to cover the material served to date, and for additional evidence to be served - subject to a term that the only material to be served in the period remaining is:

1. material supplied to the applicant under the FOI request, but not yet served by the applicant; and

ii.declarations which ONLY relate to the material obtained under FOI.

The applicant was agreeable to these conditions, with one exception. He was endeavouring to obtain evidence relating to employer/employee arrangements regarding inventions, from other government organisations or companies. However he was experiencing great difficulties in finding an organisation which was prepared to set out their arrangements in a statutory declaration. Nevertheless he was hopeful that he would be able to obtain such a declaration; he would not seek an extension of time merely to obtain such a declaration, but if one could be obtained within the extended time, he would not want to be excluded from serving such a declaration. Mr Cowle also indicated that he expected to complete the evidence in answer before the end of the extension sought.

DECISION

Following the concessions of the parties at the hearing, the only matter for me to decide is whether I should exclude the opponent from serving evidence relating to guide-lines for employee-developed inventions.

The principles relating to an extension of time are well set out in Ferocem Pty Limited v Commr of Patents (1994) AIPC 91-057, 28 IPR 243:

"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 with application and opposition in question.  There are also the public interests, which are not necessarily all ranged on the same side.  They include the expeditious disposal of matters in the Patents 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'."

In the present circumstances, the applicant has indicated in both the present request for an extension of time, and the previous request, that he was trying to obtain from various organisations their guide-lines for employee-developed inventions. He has also indicated prima facie plausible reasons why he has not yet been able to obtain declarations from such organisations. If the applicant is successful in obtaining such a declaration before the end of the current extension sought, I fail to see how the opponent will be subject to any significant disadvantage; on the other hand, if that evidence is material to the applicant's case, excluding that evidence would clearly be disadvantageous to him. In this situation, I see no reason for not permitting service of any such evidence within the extended time for serving evidence.

Costs

The applicant sought costs following the event. The opponent argued that the reason for the extension was associated with the scope of the FOI request, and that it should not (in effect) be penalised for the size of the FOI request.

The costs of the present proceedings arise solely from the objection to the extension of time - they are not associated in any way with the cost of providing material under FOI. I find it quite incongruous for an opponent to object to an extension of time when a principal cause for the need for the extension of time lies within their control - rather than the control of the applicant. Consequently, I award costs against the opponent.

Conclusion

I grant an extension of time for serving evidence in answer, to 17 October 1994, subject to the following terms:

Evidence-in-answer served after the date of the hearing will be restricted to:

a.material supplied to the applicant by the State Rail Authority as a result of the FOI request;

b.declaratory evidence pertaining directly to the material obtained as a result of the FOI request; and

c.evidence relating to guide-lines from organisations, regarding their employee-developed inventions.

D Herald
Deputy Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Sydney

Solicitors for the opponent        :  Sly & Weigall, Sydney