Austgen Biojet Holdings Pty. Ltd. v. Mervyn C. Goronszy

[1989] APO 19

In the Matter of the Patents Act 1952

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In the Matter of Patent Application 560510 in the Name of AUSTGEN BIOJET HOLDINGS PTY. LTD.

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In the Matter of Opposition thereto by MERVYN C. GORONSZY

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In the Matter of an Application for Extension of Time within which to Serve Evidence‑in‑Reply.

DECISION OF AN ACTING SUPERVISING EXAMINER OF PATENTS:
Background
         Patent application 560510 for an invention entitled "Effluent Treatment" was advertised accepted in the Official Journal on 9 April 1987.  MERVYN C. GORONSZY lodged notice of opposition under section 59 to the application on 8 July 1987, and evidence‑in‑
support and evidence‑in‑answer were filed on 26 May 1988 and 1 December 1988 respectively.
         The time to lodge evidence‑in‑reply has been extended once, without objection to 1 June 1989.  A further application pursuant to regulation 57 seeking an extension of time of three months in which to serve evidence was made by GORONSZY on 30 May 1989 and this application was objected to by AUSTGEN BIOJET HOLDINGS PTY. LTD. (AUSTGEN).  Both parties were offered a hearing which both declined,

each lodging written submissions in lieu through their Patent Attorneys, Messrs Shelston Waters for GORONSZY and F B Rice & Co for AUSTGEN.
Application
         With respect to the granting of extensions of time in opposition proceedings, regulation 83A of the Patents Regulations requires that "... the Commissioner shall not grant the extension of time unless he is satisfied that the extension is justified having regard to all the circumstances of the case".  I therefore need to consider the reasons advanced for and against the present extension as provided by the parties.
         The circumstances and grounds given in the present application for extension of time are as follows:

"I have been diligently seeking information from a number of authorities in England, New Zealand and Australia as part of my reply to the assertions made in the Applicant's evidence‑in‑answer, however due to record systems and staff shortages in these authorities they have been unable to service my requests within the required time frame.  Further time is required to obtain this information and complete preparation and service of my evidence‑in‑reply.  I believe this will be the final extension required and I am aware of the Applicant's wish to have this matter resolved as soon as possible."

Before referring to the respective submissions by the parties, it is worth noting the stated interest of the opponent when lodging his opposition, namely:

"I am a consultant in respect of effluent systems and was involved in the development of the invention the subject of the above referenced application and believe I am entitled wholly or in part to any rights in respect of the said invention."

A brief perusal of the evidence already filed in this matter reveals that both parties have addressed the claim by the opponent that he is entitled to rights in respect of the invention.  The opposition ground of obtaining is included amongst those listed on the notice of opposition.
Patent Applicant's Submission
         In submissions made in support of the objection to the extension application, AUSTGEN's attorney raised a number of matters which can be summarized as follows:

1.The applicant while not objecting to the first extension of time for serving evidence‑in‑reply had at the time indicated to the opponent and the Patent Office its desire for a speedy resolution of the opposition.

2.The nature of the "record systems and staff shortages" leading to the delay in service of evidence referred to in the present extension application is not explained.

3.It is reasonable to expect that a reasonably diligent opponent would have been able to collect and lodge evidence‑in‑reply in the six months already available.

4."While there is a public interest in ensuring against the grant of invalid patents, there is also a public interest in ensuring against unnecessary protraction of an action whereby the public is left in doubt as to the outcome for a long period."

Opponent's Submission
         The submission lodged on behalf of the opponent includes eight numbered paragraphs which detail steps the opponent has taken to gather and serve his evidence‑in‑reply.  In particular these paragraphs address:

‑the nature of, and reasons for seeking to gather, certain pieces of evidence to have served as evidence‑

in‑reply,

‑the delays and difficulties experienced in receiving material and declarations from several libraries, a firm of British consultants, and personnel in Australia and the United States of America.

The submission also explains that the evidence being assembled is intended to reply to certain aspects of the evidence lodged in answer.  Furthermore the submission addresses the respective interests of the parties and the public in the matter.  The opponent's position regarding the present extension application is fairly well summarized by this paragraph of the submission:

"We believe it is clear from the above that the opponent has been serious in his opposition and has been diligently seeking evidence to challenge the assertions made in the applicant's evidence‑in‑answer.  The opponent, given the ground of obtaining, has an equal interest in having a patent granted, but submits this interest is balanced by the need for the Commissioner's delegate to be fully appraised of all relevant evidence before deciding this matter and that the exclusion of highly relevant evidence at this stage would severely disadvantage the opponent's case merely on the grounds of expediency and be contrary to all known rules of natural justice."

Decision
         In his opposition to this patent application, the opponent is alleging that he was involved in the development of the invention and thus has some rights thereto.  He is pursuing opposition on the ground of obtaining in order to establish those rights.
         According to the opponent's submission, evidence is being assembled to seek to challenge a number of claims and statements included in applicant's evidence‑in‑answer.  In particular it seems that some of the evidence‑in‑reply will attempt to dispute evidence from Brown and Jones (the actual inventors listed on the patent application) as to their involvement in developing the invention.  The opponent apparently believes he needs to reply to certain matters in the applicant's evidence to further his position in the opposition action, and has directed his efforts towards assembling evidence for that purpose.  Prima facie that appears to be a legitimate course to follow, a course open to him by the provisions of regulation 57.
         Given the various sources from around the world from which the opponent has sought material and evidence for his evidence‑in‑
reply, it is perhaps not surprising that he has experienced delays in receiving certain materials as is explained in his submission in this matter.  There is no indication that the opponent has approached the preparation of his evidence‑in‑reply, in other than a diligent fashion.  In my view it is clear that his efforts to prepare his evidence have been hampered by delays in receiving material from individuals or organisations over whom he has no direct control as to the timely provision of that material.
         In the circumstances, I am satisfied that the opponent has had insufficient time to lodge his evidence and has made out a proper case justifying the extension sought.  However before deciding to grant the extension I need to consider the respective interests of the parties and the public interest.
         As the patent applicant points out, granting a further extension of time will further delay the opposition coming to a hearing and thus the public will be left in doubt as to the outcome for an increased period of time.  The applicant also indicates that its business interests are being somewhat hampered due to uncertainty as to the fate of the application.  On the other hand, while the opponent acknowledges that it is in the public interest to have the opposition settled promptly, he submits that it is also in the public interest for the Commissioner to have all relevant evidence before him concerning the opposition grounds.  Furthermore it is clearly in the opponent's interests to have sufficient time to adduce relevant evidence.
         In considering the various interests, it seems to me that the opponent's interests in having an adequate opportunity to provide his evidence together with the public interest aspect of the Commissioner being fully appraised of all relevent evidence in the matter outweigh the other interests.  The dominant interests as mentioned would of course be best served by allowing the present extension of time.  In so concluding, I do not see the delay in the proceedings at present being a significant factor especially as the patent application is under opposition by a second opponent and irrespective of GORONSZY's opposition, the application cannot proceed to grant before the other opposition is decided.
         I have therefore decided that the extension is justified and ought to be granted.  Accordingly I grant an extension of time until 1 September 1989 for serving evidence‑in‑reply.

(T.R. BRUHN)

Patent Attorneys for the applicant: F B Rice & Co, Sydney