Anthony Michael Barker v Peuren Agencies Pty Limited

[1983] APO 33

In the Matter of the Patents Act 1952

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In the Matter of Application No. 525662 in the Name of ANTHONY MICHAEL BARKER

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In the Matter of Opposition thereto under Section 59 by PEUREN AGENCIES PTY. LIMITED

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In the Matter of Application for Special Leave to Adduce further Evidence under Regulation 59(1)(b).

DECISION OF AN ASSISTANT COMMISSIONER OF PATENTS:
         This is a matter in which Peuren Agencies Pty. Limited (hereinafter referred to as Peuren) seek special leave under Reg. 59(1)(b) to adduce further evidence in support of a section 59 opposition, referred to herein as the substantive Peuren opposition.
         The substantive Peuren opposition is directed against patent applic‑
ation 525662, lodged on 19 April, 1979 based on a New Zealand application and in the name of Anthony Michael Barker (hereinafter referred to as Barker).
         Three notices to the Commissioner of matters affecting the validity of a patent were lodged under S.57(1) whilst application 525662 was before an Examiner in the Patent Office.  The notices were lodged by Botron Pty. Limited (hereinafter referred to as Botron) and Mr. W.L. Thomson.  Acceptance was advertised on 18 November, 1982.

Peuren lodged a Notice of Opposition on 16 February, 1983 and completed serving evidence in support of the substantive opposition on 18 April, 1983.  Another opponent D. and V. Rassac Estates Pty. Ltd. (hereinafter referred to as Rassac) lodged a Notice of Opposition on 14 February, 1983 and after one extension of time completed serving evidence in support on 12 August, 1983.  Colonial Fireplaces Pty. Ltd. (hereinafter referred to as Colonial Fireplaces) on 22 June, 1983 lodged an application under S.160(2)(a) for an extension of time to lodge a Notice of Opposition, and a hearing has been appointed for 26 October, 1983.
         Barker lodged an application for an extension of time of three months for serving evidence in answer to the substantive Peuren opposition on 18 July, 1983 and subsequently Peuren gave notice on 5 August, 1983 that it objected to any extension beyond 18 September, 1983.  In a letter lodged at the Patent Office on 8 August, 1983 Barker withdrew the application for an extension of time and advised that:

"The applicant has decided not to lodge evidence‑in‑answer or to amend the application at this stage and respectfully requests that this matter be set down for a Hearing at the earliest possible time."

The present application for special leave to adduce further evidence was lodged by Peuren on 19 August, 1983.  In a letter dated 24 August, 1983 the Patent Office informed the attorney acting on behalf of Peuren that Barker had withdrawn its application for an extension of time to serve evidence in answer. Barker objected to the application for special leave to adduce further evidence and a hearing in this matter was held in Canberra on 27 September, 1983.  Mr. W.L. Thomson appeared for Peuren and Mr. A. Duncan appeared for Barker.
         The application for special leave to adduce further evidence was supported by a statutory declaration made by Mr. W.L. Thomson which gives the following grounds for seeking special leave:

"1.A number of prior publications including a number of United States patent Specifications which anticipate the present invention have just been brought to attention.

2.It is the wish of the opponent to have this material included and considered in determination of the opposition proceedings."

The nature of the further evidence is described as:

"AA Declaration by VICTOR EDWIN WALTER CASSAR of RMB 2422, Nagambie, Victoria 3608, which quotes prior publications.  This Declaration has been lodged by another opponent.

BA Sydney Company BOTRON PTY. LTD. of Auburn, New South Wales, who are engaged in the same field of commercial activity as PEUREN AGENCIES PTY. LIMITED (the opponent), have just brought to notice a number of United States specific‑

ations and other prior publications which anticipate the present invention.

CThe opponent (PEUREN AGENCIES PTY. LIMITED) is the respondent in the Federal Court of Australia, Australian Capital Territory, District Registry, General Division, No. G85 of 1982 in an action for breach of copyright brought by KENT HEATING PTY. LTD.

In the Statement of Claim "KENT" stated that they acquired a licence from "BARKER" (the applicant for Letters Patent).

In paragraph 13 of the Statement of Claim "BARKER" refers to a drawing bearing the date "1 February 1978" entitled "Barker Log Burner Final Assy" which it is believed to be a drawing of the stove, the subject of the present application for Letters Patent.  Steps are being taken to ascertain if this drawing was available in Australia on 1 February 1978 or before 20 April 1978, the priority date of Application No. 525662."

Hereinafter the documents in the Thomson declaration will be referred to as "A", "B" and "C".
         At the hearing Mr. Thomson explained that he had discussions with Mr. D.C. Carter, the attorney acting on behalf of Rassac, in respect of other matters between Rassac and Kent Heating Pty. Ltd.  Following these discussions Mr. Carter had provided document "A" which had been served as evidence in support of the substantive Rassac opposition.  Mr. Thomson further explained that there was a potential court action between Botron and Kent Heating Pty. Ltd. and this led to a meeting between the principals of Botron and Peuren.  As a result of this meeting Mr. R.G. Halliday, the attorney acting on behalf of Botron had provided the documents in "B".  Mr. Thomson stated that Peuren had previously not been aware of the documents in "B".
         Mr. Duncan commenced his argument by suggesting an interpretation of Reg. 59(1)(b) which was similar to the interpretation of S.59(1) adopted by the Federal Court in Erling Vangedal‑Nielsen v. Commissioner of Patents and Gelphen Nominees ((1981) AOJP 298 at page 300) because the wording of Reg.59(1)(b) was the same "mutatis mutandis" as S.59(1).  Thus he argued that the granting of special leave to adduce further evidence was not a right and Peuren bore the onus of showing the exceptional reasons why special leave should be granted.  Mr. Duncan submitted that it was not the case that special leave should be granted merely because Barker had not raised exceptional reasons why it should not be granted.
         Whilst I acknowledge Mr. Thomson's submission that the Vangedal‑
 Nielsen case was concerned with an application for an extension of time, I think that his client bears the onus of showing the exceptional reasons why special leave should be granted.
         Mr. Duncan's main argument was that in the present application for special leave to adduce further evidence Reg. 59(8) was brought into force by the letter lodged on 8 August, 1983 on behalf of Barker.  Thus he submitted that this letter functioned as a notice served under Reg. 57A and Reg. 59(8) required Peuren to establish that the evidence it now sought to adduce could not have been served as evidence in support of the substantive opposition.
         Mr. Duncan's argument was based on applying the "mischief rule" to the interpretation of Reg. 59(8) and looking to the intent of the sub‑regulation because he thought the wording of the sub‑regulation was ambiguous.  This interpretation is at variance with previous interpretations of reg. 59(8) in Canadian Industries Ltd. v. Australian Paper Manufactures Ltd. ((1981) AOJP 4565 at page 4566) and in Dextec Metallurgical Pty. Ltd. v. Societe Miniere et Metallurgique de Penarroya ((1983) AOJP 264 at page 265) which relied on the interpretation based on the plain meaning of the words in the sub‑regulation.  I can find no reason for rejecting the interpretation of Reg. 59(8) based on the plain meaning of the words and accepting the interpretation suggested by Mr. Duncan.  Therefore I find that Reg. 59(8) is not brought into force by the letter lodged on 8 August in the manner argued by Mr. Duncan.  Consequently Peuren does not have to establish that the evidence it now seeks to adduce could not have been served as evidence in support of the opposition.
         Another argument advanced by Mr. Duncan was that an applicant for special leave to adduce further evidence had to be diligent in collecting evidence and he submitted that there was no evidence that Peuren had been diligent.
         A further point raised by Mr. Duncan was a submission that it would not be in the public interest to grant special leave to Peuren to adduce evidence that formed part of the evidence in support of the substantial Rassac opposition.  He correctly indicated that this evidence would be considered by the Commissioner, either as part of the substantial Rassac opposition or if that opposition was withdrawn as a bar to the sealing of the present patent application.  He argued that the granting of special leave to adduce further evidence forming part of another opposition could allow a party of large financial resources to wear down a patent applicant of weak financial resources by "arranging" a series of "male fides" opponents.
         Mr. Duncan concluded that the granting of special leave to adduce further evidence would deny Barker the opportunity of a speedy hearing with respect to the substantial Peuren opposition whereas refusing special leave would not prevent Peuren from bringing the further evidence before the Commissioner by allowing the other opponents to serve this evidence as part of their substantial oppositions.
Mr. Thomson commenced by directing my attention to the Permutit Co. Ltd.'s Application ((1964) RPC 22) in which the factors of diligence and undue delay were considered and he pointed out that these considerations had been applied in the Dextec Metallurgical case (supra) at page 266. Mr. Thomson submitted that the history of the substantial Peuren opposition demonstrated that his client had acted with diligence and was not responsible for any undue delay.
With respect to public interest Mr. Thomson submitted that on the basis of the decision in the Matter of an Application for a Patent by Osterstrom and Wagner at (1932) RPC 565 it was in the public interest that all relevant matters should be before the Commissioner before a decision is made. Mr. Thomson pointed out that the further evidence would not take Barker by surprise and that it would not open up any new grounds of opposition. Replying to Mr. Duncan's statements regarding "male fides" opponents Mr. Thomson asserted that Peuren was engaged in a serious opposition and denied that there was any communication between Peuren, Rassac and Colonial Fireplaces before Peuren lodged its notice of opposition.
         Mr. Thomson submitted that Barker by requesting an extension of time to serve evidence in answer to the substantial Peuren opposition indicated that the applicant did not want a speedy hearing on the matter.  Mr. Thomson agreed that it was open to Peuren to assist Rassac and Colonial Fireplaces (if an extension of time is granted) with their substantive oppositions but concluded that Peuren would be prevented from presenting a substantive opposition in the way it wanted if special leave to adduce further evidence was refused.
         The only evidence I have before me regarding diligence is the official Patent Office file on patent application 525662, which contains copies of all the documents and accompanying letters lodged in respect of this application.  A perusal of this file convinces me that Peuren speedily dealt with all matters concerning its substantive opposition.
         The public interest considerations involve balancing the speedy resolution of all matters affecting a patent application against the requirement to grant a valid patent on that application.  One of the factors I have to consider is the time of the application for special leave in relation to the stage which the opposition has reached (American Flange and Manufacturing co. Inc. v. Rheem Australia Pty. Ltd. (1960) AOJP 1230 at page 1231).  This has to be balanced against the nature of the evidence sought to be adduced which, if likely to be conclusive in determining the opposition, might be granted special leave at a late stage in an opposition (Montecatini v. Eastman Kodak Co. (1967) AOJP 151 at page 156).  Peuren made the application for special leave six months after the Notice of Opposition was lodged and before a hearing date has been appointed for the substantial opposition.  The granting of special leave to Peuren will not unduly delay the sealing of a patent on application 525662 because Barker has to finalise the substantial Rassac opposition and the application for an extension of time to lodge a Notice of Opposition by Colonial Fireplaces has to be determined.
Another factor I have to consider is the nature of the evidence sought to be adduced by Peuren. The evidence should prima facie be relevant to Peuren's substantial opposition to application 525662 (American Flange and Manufacturing case (supra) at page 1231) and I should reject evidence which is speculative in nature (Cooper Mechanical Joints Ltd.'s Application (1958) RPC 295 at page 297).
         The final factor I have to consider is whether the further evidence would catch Barker by surprise and attack application 525662 in a totally new area and on totally new grounds (Dextec Metallurgical case (supra) at page 265).
         I am satisfied that the document "A" is prima facie relevant to an opposition to the Barker specification because the document has been served as evidence in support of the substantive Rassac opposition and it will not take the applicant by surprise because it has already been served.  Mr. Thomson's declaration in support of the application for special leave states that the document "quotes prior publications" and the evidence in support of the substantive Peuren opposition also attacks the specification on the ground that the invention was published in Australia (S.59(1)(e)).  Therefore I grant Peuren special leave to adduce a declaration by Victor Edwin Walter Cassar.
         Mr. Duncan's argument that it is not in the public interest that Peuren be granted special leave to adduce further evidence served by another opponent would have more force if it could be shown to affect the balance between speedy resolution of patent matters and the granting of a valid patent. Whilst I have sympathy for the argument that it is not in the public interest that opponents enter opposition proceedings "male fides" I think an applicant for a patent who makes assertions that oppositions to his patent are being "arranged" would require evidence to prove his assertions.  In the present situation I accept Mr. Thomson's statement that Peuren is involved in a serious opposition. 
         I am satisfied that the documents in "B" are prima facie relevant to an opposition to application 525662 because the Thomson declaration in support of the application for special leave states that the documents "anticipate the invention".  Whilst I agree with Mr. Duncan's argument that the failure to locate these documents earlier might reflect on the diligence displayed by Peuren I accept Mr. Thomson's statement that Peuren was previously unaware of these documents.  However I think it is more in the public interest that, if these documents anticipate the invention, they be considered by the Commissioner before he reaches a decision rather than reject them because they might have been discovered earlier.  I therefore grant Peuren special leave to  adduce the documents brought to notice by Botron.
         The Thomson declaration in support of the application for special leave describes "C" as a drawing which

"is believed to be a drawing of the stove, the subject of the present application for Letters Patent."

This statement raised doubts in my mind as to the nature and relevance of the drawing "C".  These doubts were increased during the hearing when Mr. Thomson admitted that though Peuren knew the drawing existed and had made attempts to obtain the drawing, Peuren did not possess "C".  The Thomson declaration continues that

"steps are being taken to ascertain if this drawing was available in Australia on 1 February, 1978 or before 20 April, 1978, the priority date of Application No. 525662."

Again this statement raises doubts about the nature and relevance of the drawing and these were not clarified at the hearing because Mr. Thomson conceded that he was still uncertain if the drawing had been published in Australia before the priority date.  Nevertheless Mr. Thomson submitted that because document "C" existed Peuren should be granted special leave to adduce the drawing because it could be extremely important evidence.
         Mr. Duncan pointed out that Peuren had refused the opportunity of an extension of time for serving evidence in support of its substantive opposition and he submitted that an application for special leave should be refused if it was merely a "backdoor" way of allowing Peuren an extension of time to collect evidence.
         I am not satisfied that "C" is prima facie relevant to an opposition to application 525662 and I am satisfied that the nature of the evidence is speculative.  In my view neither Peuren nor Mr. Thomson could be satisfied on these matters without at least sighting the document itself.  I also agree with Mr. Duncan that special leave should be granted to Peuren to adduce evidence and not as a "backdoor" extension of time.  Peuren still has to locate the drawing and verify its publication date in Australia and this in my view amounts to more than adducing evidence.  The granting of special leave in this situation would take on the appearance of an extension of time.  Mr. Thomson gave an assurance that document "C" would be served in the period allowed for by Reg. 60(1)(a) but I am not certain how he can give this assurance if Peuren has to locate the drawing.  This suggests to me that the admission of document "C" could result in further delays without any certainty that the evidence relates to the present invention or that the drawing has been published in Australia before the priority date.  On balance this cannot be in the public interest and I therefore refuse to grant special leave to Peuren to adduce the drawing referred to in "C".
         On the question of costs it is clear that neither party was totally successful and I therefore make no award of costs in this matter

(G.J. BAKER)