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

[1992] APO 71

OFFICIAL NOTICES

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application        :    No. 599244 in the name of AUSTOFT INDUSTRIES LTD.

Title:    CROP TRANSPORTER

Action:    S.59 opposition by McLEAN MANUFACTURING & B.J. McLEAN; objection to extension of time to lodge evidence-in-reply.

Decision:   Issued        . Extension granted

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No.599244 by AUSTOFT INDUSTRIES LIMITED, opposition under S.59 of the Patents Act 1952 by McLEAN MANUFACTURING PTY LTD and BARRY JOHN McLEAN, and objection by the applicant to an extension of time to file evidence-in-reply.

BACKGROUND

Application 599244 for an invention entitled "crop transporter" was lodged on 21 June 1988 and advertised as accepted on 12 July 1990.  Regulation 23.3 of the Patents Regulations 1991 applies to this case, ie. Division 1 of Part XIV of the former patents regulations applies because acceptance was advertised under the former Act.  A notice of opposition was served on the applicant on 11 October 1990 and the evidence-in-support and evidence-in-answer stages were completed by 6 July 1992.  Six extensions over a period of 12 months were granted to complete the evidence-in-support, and one extension of 3 months was granted to complete the evidence-in-answer.

On 6 October 1992 the opponents applied for an extension of time of 3 months to 6 January 1993 to lodge evidence-in-reply under former Reg. 57.  The application form indicates that the circumstances in which, and the grounds upon which, the application was made are as follows:

"The opponent is in the process of finalising evidence-in-reply which is at present incomplete due to the time consuming process of gathering evidence in relation to common general knowledge.  In addition, settlement proposals are being exchanged between the parties.  Further time is required to further negotiations toward settlement and to finalise and serve the evidence-in-reply.  Preparation of the evidence-in-reply is continuing despite the present negotiations."

The patent applicant objected to the extension and both parties lodged written submissions in lieu of a hearing.

Both parties referred to application no. 575713 in their submissions.  That application is in the name of Barry John McLean (one of the opponents in the present action) and has been opposed by Austoft Industries Limited (the applicant in the present action).
The evidence stages in 575713 were completed by 30 December 1991, and a hearing in Brisbane had been set down for September 1992, but both parties agreed to defer that hearing so that the oppositions to applications 575713 and 599244 could be heard concurrently.

SUBMISSIONS & DECISION

The opponents to application 599244 made the following submissions.

.The applicant had referred to "the acceptability of a hearing session in Sydney in March next year", and therefore the extension of time would not "disadvantage the applicant".  The opponents' attorneys submitted a copy of a letter dated 4 September 1992 from the applicant's attorneys relating to this matter.

.Evidence in the area of common general knowledge "is being addressed but is proving time consuming", the opposition is a serious opposition, and the extension of time is in the public interest.

.The applicant's objection to the extension "is a mechanism...to artificially induce an other than carefully considered response to the settlement proposal".

The patent applicant made the following submissions.

.More than 2 years has passed since advertisement of acceptance and there should be no further delay.

.The evidence in the opposition to 575713 is complete "and given the inter-related nature of the two cases" the opponents should be able to file the present evidence-in-reply expeditiously.

.The opponents have not provided any substantive reasons for the extension

.Evidence should be filed in a timely fashion notwithstanding correspondence between the parties regarding settlement.  Also, it appears that the likelihood of a settlement is slim.

DECISION

In the matter of deferring the hearing on 575713 I note that the deferment was initially requested by Austoft's attorneys in a letter to the Commissioner, dated 26 August 1992.  Part of that letter reads:

"It is requested that the application hearing in respect of this matter set down for 2 September 1992 be deferred until the next Brisbane hearing session.

This matter parallels the opposition by B.J. McLean to Austoft Industries Ltd's patent application 599244.  It is agreed between the parties that it would be highly desirable for these two matters to be heard consecutively as the issues are very similar".

Taken literally this suggests that the request was to defer the hearing until September 1993, since hearing sessions in Brisbane are annual events.  However, it now seems that the intention was not to suggest that the hearing be deferred for another year: in their abovementioned letter of 4 September 1992, Austoft's attorneys state:

"We would like to make it clear that while our clients are agreeable to the deferment, they would in fact like to have both matters cleared up as soon as possible and we would ask that you have Evidence-in-Reply in respect of this matter filed as soon as possible.  This would give us an opportunity to have the matter heard quickly.  We would certainly not wish to have the matter deferred for a whole year and accordingly suggest that the hearing either be held in Canberra or Sydney.  There is normally a Sydney Hearing Session in March which might be appropriate.  Alternatively, we would be prepared to agree to a Hearing in Brisbane if a special Hearing Session could be arranged reasonably early next year.

We do stress that our clients would like to have this matter resolved unless some form of settlement can be reached before then".

I think it is reasonable to conclude from this correspondence that Austoft is content with the idea of hearing both oppositions "reasonably early next year", ie. about the time of the Sydney session in March.

I am sympathetic to Austoft's submissions that McLeans's grounds for the extension are rather weak, however I think it is more significant that Austoft is unlikely to suffer any disadvantage by the extension: the extension is to 6 January 1993 and it is clear that Austoft is prepared to wait until about March 1993 to have the matter heard.  I think there would be adequate time to prepare for the hearing even if the period to lodge evidence-in-reply was extended to 6 January 1993. 

Accordingly, I allow the opponents' application for extension of time to 6 January 1993 to lodge evidence-in-reply.

With regard to costs, Austoft's attorneys submitted
"that no costs be awarded against the present applicant on the basis that the application for extension of time actually filed in the Patent Office does not reveal a substantive ground for an extension of time."

McLean, the successful party in the action, made no submission on costs. Costs are generally awarded to the successful party, but the usual Office practice in extension of time matters where no hearing has been held has been not to make an award of costs. Thus, taking all these matters into account, I think it is appropriate in this case not to make an award of costs. 

J.I. WELSH
Delegate of the Commissioner of Patents

Attorneys for Austoft:  F.B. Rice & Co., Sydney
Attorneys for McLean:   T. Dredge & Assoc., Brisbane