ASSMANN Australia Pty Ltd v PYK Pty Ltd and Spinville Pty Ltd

[1992] APO 58

official notice

decision of a delegate of the commissioner of patents

Application        :    No.618695 in the name of ASSMANN PTY LTD

Title:    Communication System

Action:    Dismissal under reg.5.5(3) of an opposition by PYK PTY LTD and SPINVILLE PTY LTD

Decision:    Issued            .  Opposition dismissed and application to proceed to grant as soon as practicable.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No.618695 by ASSMANN AUSTRALIA PTY LTD and dismissal under regulation 5.5(3) of the Patents Act 1990 of an opposition by PYK PTY LTD and SPINVILLE PTY LTD.

background

Application no.618695 by ASSMANN AUSTRALIA PTY LTD(ASSMANN) was advertised accepted on 2 January 1992.  PYK PTY LTD and SPINVILLE PTY LTD(PYK) filed their notice of opposition on 2 April 1992 and ASSMANN confirmed that the notice had been served on it.  ASSMANN did not advise the office that the statement under regulation 5.4 had been served on it on or before 2 May 1992.  And PYK did not request an extension of time to serve this statement.  Consequently the office wrote to the attorneys representing the applicant and the opponents on 31 July 1992.  This letter in part states as follows:

"The Delegate of the Commissioner of Patents wishes to advise that no statement of Grounds and Particulars have been received.  On the assumption that the opponents has(sic) not served a copy of the statement the Commissioner intends to proceed under regulation 5.5(3) to dismiss the opposition."

The letter also gave both parties 21 days to comment and indicate whether they wished to be heard.  There was no response to this letter from either party.

DECISION

ASSMANN cannot request the Commissioner to dismiss the opposition under regulation 5.5(1) because this regulation is not available to the applicant if the statement has not been filed.  And PYK did not file a statement of their grounds and particulars.  But PYK's opposition is preventing a patent being granted on application no.618695.  In these circumstances I think it is appropriate to consider whether to dismiss the opposition under regulation 5.5(3) in order to determine the future of the proceedings.

I note the only information about PYK's opposition presently on file is the notice of opposition.  The only conclusion I can derive from this document is the fact that PYK wish to oppose the granting of a patent on application no.618695.  I also note there is no evidence on file that PYK needs more time to file their statement of grounds and particulars.  In this situation I consider it is reasonable for me to dismiss PYK's opposition under regulation 5.5(3).

Both PYK and ASSMANN were told the Commissioner would proceed to dismiss the opposition in the letter dated 31 July 1992.  Both parties were asked to reply to this letter in 21 days.  Neither party filed submissions about this proposed course of action or indicated they wish to be heard within 21 days.  Common law does not impose upon me the task of ensuring PYK takes the best advantage of the opportunity to which they are entitled, provided they are given a reasonable opportunity to present their case(Sullivan v Department of Transport 20 ALR 322 at page 343). In my view the letter dated 31 July 1992 provided PYK with a reasonable opportunity to present the case why their opposition should not be dismissed.

Therefore I dismiss the opposition by PYK against the granting of a patent on application no.618695.

SUMMARY

I dismissed the opposition by PYK against the granting of a patent on application no.618695.  Consequently I direct that application no.618695 proceed to grant as soon as practicable.

M. Kendall
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :Collison & Co, Adelaide

Patent attorneys for the opponent   :Davies Collison Cave, Melbourne