Austoft Industries Limited v Barry John McLean and McLean Manufacturing Pty Ltd

[1991] APO 39

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No 599244 by AUSTOFT INDUSTRIES LIMITED - Opposition by BARRY JOHN McLEAN and McLEAN MANUFACTURING PTY LTD and an Application for Extension of Time to Serve Evidence-in-Support of the Opposition

Background

AUSTOFT INDUSTRIES (AUSTOFT) lodged applicaton No 599244 (18181/88) entitled "Crop Transporter" on 21 June 1988.  The appliction was advertised accepted in the Official Journal of 12 July 1990.
         BARRY JOHN McLEAN and McLEAN MANUFACTURING PTY LTD jointly lodged a section 59 notice of opposition on 8 October 1990.  Two extensions of time for lodging evidence in support (up to 8 July 1991) were applied for and granted unopposed.  A further extension of time to lodge evidence-in-support was applied for on 8 July 1991 for the period 9 July 1991 to 8 October 1991.  The opponents objected to the grant of this extension.  The matter was set down for a hearing on 28 August 1991.
         Crispin Marsh of F.B. Rice & Co for the applicants and Trevor Dredge of Peter Maxwell and Associates for the opponents both made written submissions.  They both asked that the matter be decided on the basis of these submissions rather than appearing in person.
Consideration
         The application for extension of time was lodged under reg 55(a).  In deciding whether to grant the extension I am bound by reg 83A(a).  Having due regard to all the relevant circumstances in this case, my decision as to whether the extension is justified will be

based on the principles set out in Vangedal-Nielsen v Smith and
Gelphen Nominees (1980) 33 ALR 144 and also those in Lyons v Registrar of Trade Marks 1 APR 416.
         These principles require the opponents to make out a proper case justifying the extension.  They also require the Commissioner to have proper regard to the respective interests of the opponents, the patent applicant and the general public.  The Commissioner has a duty to protect the public interest both by ensuring that invalid patents are not granted and also that proceedings are not unreasonably delayed.  In this case I must therefore consider:

(a)whether there is a serious opposition,

(b)whether the opponents have good reasons for not having completed serving their evidence-in-support by 8 July 1991, and

(c)  whether the resulting delay in proceedings is unreasonable.
         The reasons given by both opponents for the extension of time are identical and are as follows:

"The evidence-in-support is yet to be completed.  While publication dates of prior art revealed from searches have been ascertained, declarations attesting to the common general knowledge in the art at the priority date of the opposed application have not been completed.  On current indications taking into account time for revision of draft declarations, the evidence-in-support should be completed within four to six weeks."

Submissions
         The main points of Mr Marsh's submission made on behalf of the applicant contained in a letter of 25 July 1991 are as follows:

(1)The applicant believes that the reasons given by the opponents' for needing both the two original extensions of time, and this present extension, show that the opponents are taking an extraordinary relaxed attitude to the present opposition.

(2)That since the opponents claim to have completed their searches and to have ascertained publication dates, they should have already lodged this evidence as partial evidence-in-support.

(3)The applicant is already selling a product made according to the claims.  Also the opponents appear to have also made and sold such a product, and therefore it is in their commercial interest to delay this opposition.

Accordingly Mr Marsh argues that although public interest must be taken into account to ensure invalid patents are not granted, it is a clear duty of the opponents to establish that there is a prima facie case to be argued, which he submitted the opponents had not yet done.
         In his written submission Mr Dredge, for the two opponents explained the circumstances of the preparation of the evidence-in-support (as yet unserved).  The main points that he made are summarised below:

(1)The opponents' searches have revealed earlier patent (575713 and 49241/85) and non-patent documents ("Producers Review" May 1978) relevant to the application in suit.

(2)Copies of the drawings from these documents are enclosed and show variable discharge heights for crop transporters.

(3)Advice is being sought from experts in the cane industry as the opponents believe that variable discharge heights on crop transporters are common general knowledge in the industry.  This is what the evidence-in-support is expected to confirm.  If it does then at least claim 1 of the present application will only amount to the teachings of one of the prior art applicatons (namely 575713 to Barry John McLean who is one of the opponents) read in the light of the common general knowledge in the art.

Additionally Mr Dredge made the point that when Austoft opposed 575713 (where the applicant was Barry John McLean one of the opponents in this case) they took almost three years to complete their evidence-in-support.  [In this earlier opposition some of this time was due to the need to adduce further evidence to complete evidence-in-support.]  Mr Dredge has also asserted that this present application if granted will actually be dependant on his clients own earlier patent 575713.  In view of all of these submissions Mr Dredge maintains that it is quite clear that his clients are mounting a serious opposition.
Decision
         Although the opponents have still not lodged their evidence, the written submission by Mr Dredge clearly indicates the presence of certain earlier documents relevant to this present application.  His arguments, that he still needs time to ascertain from experts in the industry whether these documents amount to common general knowledge, seem to me to be valid.  I am satisfied, prima facie, that the opponents are mounting a serious opposition.
         As to whether the opponents have good reasons for not having completed serving their evidence-in-support by 8 July 1991 I am not totally convinced; it seems to me that if they have completed their searches and found certain documents they could have at least served these on the applicant as partial evidence-in-support.  However I do  accept that consulting with expert witnesses in respect of these documents may take further time and thus delay proceedings.
         In these circumstances I do not consider that the delay until 8 October 1991 is unreasonable considering the respective interests of the opponent, the applicant and the public.
         The applicant has argued that any delay in lodging evidence-in-support would adversely affect their interests in view of the fact that the opponents are marketing machines which they consider might infringe the claims of a patent properly granted on this present application.
         However in view of the copending opposition to Barry John McLean's own application No 575713, the fact that the opponents have shown that they are mounting a serious opposition, and the fact that Mr Dredge claims that evidence-in-support should be complete in 4 to 6 weeks, I grant an extension until 8 October 1991.

(R.A. MELVIN)
   Delegate of the Commissioner of Patents

Patent Attorneys for the Applicant: F.B. Rice & Co
Patent Attorneys for the Opponent : Peter Maxwell and Associates