Austoft Industries Ltd v Cameco Industries Inc
[1996] APO 10
•15 February 1996
official notice
decision of a deputy commissioner of patents
Application : No. 639579 in the name of AUSTOFT INDUSTRIES LTD
Title: Base Cutter Assembly
Action: Opposition by Cameco Industries, Inc, and a request for the production of documents.
Decision: Issued .
Abstract: Earlier decision dated 23 November 1995 found prior user – but because of deficiencies in the evidence, there was some uncertainty of what exactly was prior used.
Opponent requested production of certain documents by the applicant. The applicant provided 6 documents, and a declaration from their patent attorney to the effect that there were no other relevant documents.
In the circumstances, the issue was what evidence was required for the Deputy Commissioner to be reasonably satisfied concerning his decision on prior use – not what was required for either party to best argue their case. Further, for there to be any narrowing or change with regard to the scope of the earlier finding of prior use, the onus lay clearly with the relevant party to establish the facts.
It was not appropriate for the opponent to attempt to rectify the deficiencies in its evidence by an order for production, and the Deputy Commissioner did not need documents to be produced in order to reach a reasonable conclusion regarding prior use. Consequently no order for production made.
Observed that if the applicant has not supplied relevant documents known to them, any patent granted may be invalid through being obtained by fraud, false suggestion, or misrepresentation.
patents act 1990
decision of a deputy commissioner of patents
Re:Patent Application No. 639579 in the name of AUSTOFT INDUSTRIES LTD, opposition thereto by CAMECO INDUSTRIES INC, and a request for the production of documents.
background
In my decision dated 23 November 1995 in this matter, I made a number of findings, including a finding that there had been a prior use of the invention before the priority date of the claims. However, there were difficulties with the evidence available. In brief:
the applicant argued its case on the basis that prior use had occurred (arguing that the use should be excluded by way of it being a reasonable trial) without addressing the detail of what in fact was used; and
the opponent’s evidence did not establish what was used at the admitted prior use.
As a result, my decision concluded:
“However, the evidence of exactly what was used on 8 July is far from satisfactory; but given the implicit admission that the use involved some form of the present invention, the balance of the evidence would suggest that the use was of a form of the invention corresponding to Fig 3. However, before making that conclusion I think it is appropriate in all the circumstances to provide both parties an opportunity to provide me with definitive evidence (such as engineering drawings, verifiable photographs) of what was in fact incorporated on the machine for the 8 July use.”
and the parties had until 23 December 1995 to provide any such material. In response, the opponent filed the following request on 28 November:
“On behalf of the opponent, it is requested that a subpoena be issued on Austoft Industries Limited, requiring the production to the Commissioner of Patents of:
a) Engineering drawings of the Austoft machine referred to in the evidence as having been used on 8 July 1990;
b) A manual relating to the said machine
c) Photographs of the said machine.”,
requesting that production be required before 23 December. I advised the opponent that I would not consider the issue of production until after the applicant had served its material - as any such material might render an order for production nugatory.
Following a request for further time to provide material, the applicant filed on 12 January 1996 a statutory declaration by their patent attorney accompanied by six exhibits. Subsequently the opponent pressed their request for an order for production and requested to be heard, and the applicant provided submissions arguing against an order but expressly did not want to be heard. I heard the opponent on 5 Feb 1996 by phone; the opponent was represented (as before) by Mr D Yates of Counsel.
Submissions
The substance of the opponent’s submissions are:
The relevant evidence of what was used by the applicant lies with the applicant. The opponent has no relevant evidence;
the declaration provided indicates that there is material other than what is provided; and in any event it is inconceivable that they do not have drawings of the machine - especially having regard to the alleged use as being part of a trial;
it would be unacceptable for the applicant, being the person in possession of relevant evidence, to not produce all relevant evidence and then assert that the opponent has not proven its case.
The substance of the applicant’s evidence and submissions are:
The declarant patent attorney visited the applicant’s premises and reviewed all documents held by them relevant to the definitive establishment of the form of the invention present on the machine;
only six relevant documents were located;
the declarant “was unable to find any document of any kind which unequivocally established the nature of the exact form of the invention present on the machine trialed ..”
it is not necessary for the proper completion of the opposition proceedings to issue an order for production;
the opponent had its opportunity to provide all relevant evidence prior to the hearing. It would be an abuse of the opposition process for the opponent to be granted an order for production;
in any event, sugar cane harvesters are large and complex machines. It would be unreasonable to require the production of drawings of the machine in general, rather than the part relating to the invention. To that extent, the request is tantamount to a fishing expedition, potentially in relation to a copending opposition matter.
Discussion
In considering whether I should order production of documents, it is first necessary to consider the nature of my earlier decision. There are several points of note:
the opponent failed to establish what was in fact used in the prior user - and has admitted that it has no further evidence of what was used;
my decision indicated what (on the balance of the available evidence) was the subject of the prior use;
nevertheless, recognising the deficiencies in the evidence I afforded both parties an opportunity to provide me with definitive evidence of what was in fact incorporated on the machine.
This situation is somewhat unusual. The situation is fundamentally different from that of requesting the production of documents during the normal evidentiary stages – where the documents produced are used as part of the overall case of a party. In the present case, the substantive opposition has been argued, and there has been a finding of prior user; a conclusion with regard to what was prior used based on the balance of the available evidence; and (recognising the deficiencies in the available evidence) an opportunity afforded to both parties to provide definitive evidence of what was in fact used. Although the distinction is perhaps fine, the issue at hand is not primarily one of what evidence either party can produce to best argue their case with regard to prior user. Rather, it is what evidence I need to be reasonably satisfied regarding my conclusion on prior user.
In this regard, I believe the position now is as follows:
if no evidence had been filed by either party, I would be bound by my earlier finding that “the balance of the evidence would suggest that the use was of a form of the invention corresponding to Fig 3” (see R. v. Commissioner; ex parte Mole Engineering Pty. Ltd 147 CLR 340)
‘further’ evidence may result in a more specific (or somewhat different) finding as to the details of the prior use - but only if that further evidence is clearly definitive of what was used;
for there to be any narrowing of my findings with regard to what was disclosed by the prior user, the onus clearly lies with the applicant to establish the relevant facts. Similarly, for there to be any other change of my findings with regard to what was disclosed, the onus lies with the party asserting a change to establish the relevant facts; and
to the extent that the opponent might wish to argue a broader disclosure in the prior use, its primary opportunity lay in presenting relevant evidence in the usual evidentiary stages of the opposition. If it knew of relevant material which for some reason was omitted in the evidentiary stages, it is appropriate for that to be admitted now. But beyond that I do not consider it appropriate for the opponent to rectify the deficiencies in its evidence in this opportunity for further evidence.
Furthermore to the extent that there is any suggestion that the applicant might be less than forthcoming in producing relevant evidence, I would observe:
given my previous findings, the primary result of any failure by the applicant to provide relevant material is likely to be a limitation on the degree to which my finding of prior user can be restricted; and
in any event, if the applicant has not supplied relevant documents known to them in response to the invitation in my decision, any patent granted may be invalid through being obtained by fraud, false suggestion or misrepresentation [see Prestige Group ( Australia) Pty Ltd v Dart Industries Inc (1990) AIPC ¶90-715] – a ground which I note is not available to the Commissioner in opposition proceedings.
Furthermore, I observe that the declaration of Mr Marsh could be criticised on the basis that his assertions that
· only six relevant documents were located; and
· no document could be found which unequivocally established the nature of the exact form of the invention present on the machine trialed;
are incapable of being independently tested, and the documents could have been selectivity chosen by the applicant. However I have no prima facie reason to doubt the veracity of the declaration. I also observe that, to the extent that there is any other doubt arising from that declaration, it must (in the circumstances) be resolved against the applicant – which would mean not relying on the matters in doubt to delimit my earlier findings regarding the prior use.
Decision
In the present circumstances, I am satisfied that:
it is not appropriate for the opponent to attempt to rectify the deficiencies in its evidence by an order for production; and
I do not require the production of documents in order to reach a reasonable conclusion regarding prior use.
I therefore refuse to make the order for production sought by the opponent.
I shall proceed to determine the scope of the prior use on the basis of the material as considered in my earlier decision, and the material now put before me by the applicant. Before so doing, the parties have 14 days from the date of this decision to advise the Commissioner whether they wish to be heard further in relation to how the material supplied by the applicant changes the scope of my finding that “the balance of the evidence would suggest that the use was of a form of the invention corresponding to Fig 3”. In this regard any such hearing will be limited to how the material changes that earlier finding; it is not an opportunity to re-argue the case on the basis of the material previously filed in evidence (see R. v. Commissioner; ex parte Mole Engineering Pty. Ltd supra.)
Costs
The applicant did not appear at the hearing. In all the circumstances, I make no award of costs. The position with regard to the security paid by the opponent against costs, remains as before.
D Herald
Deputy Commissioner of Patents
Patent attorneys for the applicant : F B Rice & Co, Balmain
Patent attorneys for the opponent : Spruson & Ferguson, Sydney
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