ATF Mining Electrics Pty Ltd v Bramco Electronics

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.704930 in the name of ATF Mining Electrics Pty Ltd

Title: Load Control Module

Action: S59 Opposition by Bramco Electronics, validity of notice of opposition.

Decision: Issued .
Abstract

At the hearing of the S59 opposition, the applicant raised a preliminary issue that the opponent was not a "person" within the meaning of S59 and thus was not entitled to be heard. While the applicant recognised that the Commissioner had the power to determine the opposition notwithstanding the defective notice, it submitted that only through a re-examination process could this be done.
It was held that the Commissioner has the power to proceed with the opposition notwithstanding that the notice of opposition was filed in the business name. The evidence clearly established that the true name of the opponent was Rynand Pty Ltd, which traded as Bramco Electronics.
The firm-name, Bramco Electronics, is a reference to a person, Rynand Pty Ltd and notwithstanding its inadequacy it notifies a real intention to oppose by a real person.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 704930 by ATF Mining Electrics Pty Ltd and opposition thereto by Bramco Electronics under S59 of the Patents Act 1990.

BACKGROUND

A hearing on the matter was held on 27 September 2003 in Sydney. Mr Walsh, patent attorney of Walsh & Associates, Sydney represented the applicant. Mr Chris O'Sullivan, patent attorney of F B Rice & Co represented the opponent.
However, at the hearing Mr Walsh raised a preliminary issue that the opponent was not a "person" within the meaning of S59 and thus was not entitled to be heard. This issue was unable to be resolved and consequently with the agreement of the parties I adjourned the hearing and gave both parties a set time within which to provide me with submissions on this point. With agreement of the parties, I gave the applicant 2 weeks in which to provide submissions on the issue and I gave the opponent 1 month from the date of receipt of the applicant’s submissions to file its submissions.
The opponent filed on 27 September 2002 a request to amend the notice of opposition under regulation 5.3A. The purpose of the amendment was to change the name of the opponent from Bramco Electronics to Rynand Pty Ltd trading as Bramco Electronics.
On 2 October 2002, the opponent sought production under S210 of a number of documents from the applicant. On 11 October, the applicant filed its submissions. Also, on 11 October 2002 the Commissioner informed both parties that the decision in R. v. Commissioner of Patents, Ex Parte Weiss (1939) 61 CLR 240 1A IPR 41 might be relevant to the resolution of the issue on whether there is a valid opposition.
On 4 November 2002, the opponent provided submissions on the preliminary matter of whether there is a valid opposition and provided submissions on regulation 5.3A. The opponent at that juncture indicated that it not longer wished to be heard on the S210 matter at that time.
In a letter dated 7 November 2002, the Commissioner proposed that the preliminary issue be decided on the written submissions. The Commissioner stated:
"Given that both parties had an opportunity to be heard on the preliminary issue of whether there is a valid opposition and that they have provided written submissions on the issue, the Commissioner's prima facie view is that the preliminary matter can be decided without the need to reconvene the hearing. The Commissioner proposes that the hearing officer write a decision on the preliminary matter based on the material already before him. If his decision is that there is a valid opposition, the substantive matter will then be set for hearing."
Subsequently, on 12 December 2002 I informed both parties that I proposed to decide the matter in the absence of any objection to the contrary. I also requested that any further submissions on this matter to be filed within 7 days. The applicant advised that it had no objection to this proposal and filed its submissions on 19 December 2002. While the opponent did not comment, I note that it had filed previously filed its submissions on 4 November 2002.
NOTICE OF OPPOSITION
The central issue is to decide whether there is a valid opposition. The notice of opposition filed on 6 August 1999 was in the name of Bramco Electronics. There is no dispute that Bramco Electronics is a trading name and is not a “person” within the meaning of S59.
APPLICANT'S SUBMISSIONS
Mr Walsh for the applicant submitted that the notice of opposition did not comply with S59 of the Patents Act 1990 as it did not identify a person (either natural or legal) who was entitled to be an opponent and consequently the notice of opposition was not in the approved form as required by Patents Regulation 5.3(1). Mr Walsh emphasised in his submissions that only a legal or natural person is entitled to file an opposition. Mr Walsh recognised that the Commissioner had the power to determine the opposition notwithstanding the defective notice. Mr Walsh submitted:
“In the decision of Ex parte Weiss, the Applicant in those proceedings sought to deny the Commissioner the right to determine the Opposition. The present case is distinguishable from that case as there is no dispute in the present case as to the Commissioner's right to ultimately determine the Opposition. What is in dispute by the Applicant is whether or not the Opponent is statute barred from participation in the present proceedings for fundamental non compliance with the threshold person requirement of S59. The applicant submits that the person requirement is purely statutory and that there is no discretion available to the Commissioner to invoke regulation 5.3A as there is no person identified. To substitute a legal person at this stage in the Opposition would be to create a new opponent filed outside the opposition period. The Opponent has not satisfied threshold compliance with S59 to enable it to participate further in the proceedings.”
Mr Walsh also submitted that the notice of opposition did not include an Australian Business or Corporate number and that a search of the business names register revealed that there are two possible proprietors of Bramco Electronics, namely The Trustee for the Gil Leishman Family Trust ABN 49 327 604 798 and Rynand Pty Ltd ABN 48 001 818 846. Thus for these reasons Mr Walsh submitted that the notice of opposition was invalid.
Mr Walsh submitted that strict compliance with S59 was mandatory. In Mr Walsh's view, the defect in the notice was a fundamental statutory breach of S59 as the notice did not identify the opponent as a legal person. Mr Walsh submitted that there was a threshold requirement in relation to the "person entitled". He suggested that authorities in the area "reveal a threshold compliance in the enabling documents with the person concerned". The cases of Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Company 1969 120 CLR 136 at 653 per Kitto J; Compri Technic Pty Ltd v Pneumatic Systems International Pty Ltd [1996] APO 62; Valence William Mckenzie and Uwatec Australia Pty Ltd (1995) 30 IPR 575 were cited. Mr Walsh submitted that the present case was distinguishable from those authorities because the threshold requirement of identification of a “person” entitled under s59 had not been met. Mr Walsh argued that if the threshold requirement is not met then a purposive construction of the notice for mere error correction cannot be undertaken. Mr Walsh submitted that there is a fundamental difference between the lapse of procedure by a properly identified person and non-compliance with an enabling provision of the Act requiring the identity of a person entitled.
Mr Walsh also submitted that it was "the practice of the Commissioner of Patents to treat a Notice of Opposition which does not identify a person entitled as invalid." At the hearing, Mr Walsh stated that he received verbal advice from the Office on this issue. However, in a letter dated 11 October 2002 Mr Walsh further commented on this advice to the effect that while the notice of opposition “would be treated as invalid...each case would be treated on its merits.” As no further discussion took place with the Office on this issue, my view is that treating a notice of opposition as invalid is not mandatory and will depend upon the circumstances. As this hearing is about those circumstances I do not need to consider Mr Walsh’s submission on this point any further.
Mr Walsh also submitted any amendment of the notice of opposition to substitute the name of the opponent would in fact be a new notice for which a S223 action would have to be initiated as the time in which to file a new notice had expired. Mr Walsh stated that the applicant would object to such an application.
Mr Walsh suggested that the proper action in this case was for a re-examination action (bar-to-sealing) to occur. This would ensure that the public interest would be served. He also submitted that the Commissioner had the power to dismiss the opposition for lack of compliance with S59 under regulation 5.5(1).
In summary, Mr Walsh submitted that the notice of opposition filed on 6 August 1999 in the name of Bramco Electronics was invalid and hence the opponent had no right to be heard in the substantive opposition. Mr Walsh also submitted that this would not prevent the opponent's evidence from being considered by the Commissioner as the Commissioner had the power to conduct the "opposition" as an ex-parte matter in the form of a re-examination.
OPPONENT’S SUBMISSIONS
Mr O’Sullivan submitted that Bramco Electronics is registered as a business name under the Business Names Act (1962) (NSW) and that through this business name, the opponent Rynand Pty Ltd is identifiable. Mr O’Sullivan emphasised that this was not a case in which there is a mistake as to the identity of the opponent but rather this was a case in which there was a mistake of the proper name of the opponent.
In response to Mr Walsh’s submission that there are two proprietors to Bramco Electronice, Mr O’Sullivan filed a statutory declaration dated 4 November 2002 with an accompanying exhibit COS1. Exhibit COS1 is a copy of a Business Names Extract for Bramco Electronics, which states that there was only corporation carrying on the business of Bramco Electronics namely Rynand Pty Ltd who from the extract had being the proprietor since 3 June 1989.
In his submissions, Mr O’Sullivan referred to the history of negotiations between the parties and exhibit CSO3 was an copy of the draft licensing agreement between Ampcontrol Pty Ltd (the holding company for the applicant) and Rynand Pty Ltd. The draft agreement mentions Bramco Electronics as the opponent. Mr O'Sullivan pointed out that the letter accompanying the draft licensing agreement was addressed to Bramco Electronics.
Exhibit CSO4 contained a number of letters including Official letters relating to the opposition that referred to the opponent as Rynand Pty Ltd.
Further, Mr O’Sullivan pointed out that Mr Walsh was aware of the issue of “statutory non compliance”. He further pointed out that the issue could have being resolved prior to the hearing on the substantive matter.
A declaration dated 1 November 2002 from Mr Gilbert Innes Leishmann was also filed. In this declaration, Mr Leishmann stated that he is a Director of Rynand Pty Ltd, which has traded as Bramco Electronics since 3 June 1989. Mr Leishmann also stated in his declaration that Rynand is also the trustee for the G. I. Leishmann Trust.
Mr O’Sullivan also commented on the fact that the applicant had known for a considerable time that Bramco Electronics was a business name and that Rynand Pty Ltd was the registered proprietor.
DECISION
The evidence indicates that there is only one proprietor of the business Bramco Electronics, namely Rynand Pty Ltd. The evidence also indicates that the parties to the opposition were well aware of the corporate identity that lay behind the business. At the hearing, Mr Walsh indicated that the applicant was aware of the fact that Bramco Electronics was, at the time the notice of opposition was filed, a business name. This much is contained in a letter to the Office dated 11 October 2002. From the evidence, and in particular from the extract from the Business Names database, I can see that there is no difficulty in identifying the true name of the opponent. Suffice to say that all the evidentiary procedures under Chapter 5 have been complied with and both parties appear to have been working on the presumption that a valid opposition was in train.
The practice of the Patent Office has been to try to determine the purpose of the document if there is doubt about its meaning, see for example Abacus Engineering Ltd v Cananzi and Cananzi Hydropneumatics [1983] APO 6 (12 April 1983); 1984 APOR 3. Purposive construction of a document has also been approved by the courts in a number of cases such as the Weiss’s (supra) and Kaiser Aluminium (supra).
A relevant case on the issue is Abacus (supra) in which a firm of solicitors opposed the restoration of a patent. In his decision, the delegate discussed the Weiss’s case (supra) and remarked as follows.
"I was also referred to R. v. Commissioner of Patents, Ex Parte Weiss (1939) 61 CLR 240. This case also concerned a notice of opposition (to grant) which had been challenged on the grounds that, firstly, the notice was in the name of a firm and therefore not in the name of a person within the meaning of the Act, and secondly that in any event the opponent had no locus standi. The Full Bench of the High Court considered the Deputy Commissioner's decision which had granted leave to amend the notice by changing the name of the opponents, and had held that the opponents did have locus standi. Latham CJ. remarked 'I know of no authority for allowing any person to oppose other than simply as a person' and Dixon J. stated 'It is needless to add that in a proper case irregularity in a notice may justify dismissal of the opposition'.
However it is important for these quotations to be placed in correct context. Thus the above quotation from Dixon J. occurs in a passage which reads:
'To make an objection in the firm's name was irregular. The firm-name is the description of the partners acting in conjunction for the purposes and within the scope of the partnership. It may be conceded that, not only does it insufficiently identify the individuals constituting the partnership, but it indicates an association of persons acting in a particular capacity or right. But I do not think that the misdescription or misnomer involved in the use of the partnership name makes the notices of opposition mere nullities. Under the power to make regulations contained in sec. 108, it would, I think, be possible to authorize the use of the firm-name in a notice of opposition. In fact the regulations prescribe a form requiring the full names of the opponents. But the regulations also confer a power of amendment. A firm-name is, after all, a reference to persons, and, notwithstanding its inadequacy and the limitation of capacity or legal relationship implied, it notifies a real intention to oppose by real persons. In my opinion it forms a sufficient foundation to entitle the commissioner to proceed. It is needless to add that in a proper case irregularity in a notice may justify dismissal of the opposition. In the present case, however, it has been thought right to allow an amendment and thus to make the notice regular.'"
In his decision, the delegate ultimately dismissed the objection to the notice of opposition.
In my view the above quotation correctly reflects the law. It is clear to me that the Commissioner has the power and discretion to deal with the notice. Given the nature of the relationship between the parties and their inherent knowledge of the identity of the opponent I can see no difficulty in identifying the true name of the opponent.
In answer to Mr Walsh’s argument on the threshold requirement, Weiss’s case (supra) clearly provides the answer. The firm-name, Bramco Electronics, is a reference to a person, Rynand Pty Ltd and notwithstanding its inadequacy it notifies a real intention to oppose by a real person. Hence, the threshold requirement suggested by Mr Walsh has been met. In addition, the fact that no ABM number was referenced in the notice of opposition is immaterial.
Hence the opposition is valid and I dismiss the objection to the notice of opposition. Thus, the opposition can proceed with the current notice. I note that there is also an application under regulation 5.3.A to amend this notice. I do not see that the amendment is necessary as the opposition can proceed irrespective of the regulation 5.3.A. In any case, I doubt that there has been a clerical error or obvious mistake as required by the legislation. Therefore, the Commissioner will not process the amendment any further unless the opponent advises that it wishes to pursue the matter any further.
Having disposed of the preliminary matter of the validity of the notice of opposition, the hearing can be reconvened on 29 April 2003 or on another date as agreed to by the parties.
COSTS
Costs normally follow the event. While the hearing on the substantive opposition had been adjourned, the preliminary issue on whether there is a valid opposition has been decided. Therefore, I award costs according to schedule 8 for the hearing held on 27 September 2003 against the patent applicant ATF Mining Electrics Pty Ltd.
G.M.Cox
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Walsh & Associates, Sydney
Patent attorneys for the opponent : F B Rice & Co, Sydney

[2003] APO 14

28 March 2003