Australian Lock Company Pty Ltd v Lockwood Security Products Pty Ltd - [2005] APO 12

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 753733 in the name of AUSTRALIAN LOCK COMPANY PTY LTD

Title: Moveable Element Key and Key Handle and Lock

Action: Request for leave to amend the complete specification, an opposition to the request by LOCKWOOD SECURITY PRODUCTS PTY LTD, and application for an extension of time in which to serve evidence in support (reg 5.10(2)).

Decision: Issued 18 March 2005 .
Abstract

An extension is not appropriate.
The requirement for expert evidence in this case is not necessary. Lockwood’s submission was that the evidence would not go beyond agreeing with what was set out in the Statement of Grounds and Particulars. Furthermore, the issues raised can be dealt with by submissions at the hearing.
While Lockwood was operating under erroneous understandings as to the need for evidence, the need for new experts and the practice of IP Australia in granting extensions of time, the considerations of Race Lotto v AWA Limited [1998] APO 78 do not apply as there is no public interest in granting an extension for evidence that is not necessary.
The explanation of the delay, the parties’ interests and the public interest also do not support an extension being granted.
In line with the long-standing practice of the Commissioner, Lockwood is allowed seven (7) days to serve and file any evidence to hand.
Costs are awarded against Lockwood.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 753733 by Australian Lock Company Pty Ltd and a matter of a request for leave to amend the complete specification, opposition to the request by Lockwood Security Products Pty Ltd, and application for an extension of time in which to serve the evidence in support (reg 5.10(2)).

BACKGROUND

Patent application 753733 in the name of Australian Lock Company Pty Ltd ("ALC ") was filed on 3 September 1999 as PCT/AU99/00722 for a “Moveable Element Key and Key Handle and Lock”. The application was advertised accepted on 24 October 2002. On 24 January 2003 Lockwood Security Products Pty Ltd ("Lockwood ") filed a notice of opposition (“the substantive opposition”). While, at the time of this decision, Lockwood had changed its name to ASSA ABLOY Australia Pty Ltd, I will continue to refer to them as Lockwood. On 23 December 2003, following service of the statement of grounds and particulars, but no evidence in support, ALC filed amendments to the description and claims of 753733. A copy of the amendment request was sent to Lockwood on 13 January 2004 inviting them to comment. No comments were received, but Lockwood filed a letter on 23 January 2004 requesting a direction regarding the time limit for serving evidence in support in the substantive opposition. On 17 February 2004 the Commissioner directed that the time limit for serving evidence in support in the substantive opposition would expire one month after the date that the parties were notified of refusal, withdrawal or…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Australian Lock Company Pty Ltd v Lockwood Security Products Pty Ltd [2005] APO 12
Case: [2005] APO 12
Decision Date: 18 March 2005

CaseChat Overview and Summary

Lockwood Security Products Pty Ltd filed a notice of opposition to amendments to a patent application 753733 by Australian Lock Company Pty Ltd ("ALC") and subsequently served the Statement of Grounds and Particulars. Lockwood then filed a request for an extension of time to file evidence in support of their opposition. ALC objected to any extension being granted. The matter was heard in Canberra on 23 February 2005. Lockwood argued that they had not been able to file evidence in time because they had not been able to obtain an expert to provide evidence in support of their opposition. Lockwood also submitted that their understanding of the need for evidence, the need for new experts and the practice of IP Australia in granting extensions of time, were reasonable and that the considerations in Race Lotto v AWA Limited [1998] APO 78 applied as there was a public interest in granting an extension for evidence that was not necessary. The Commissioner found that expert evidence in support for the present opposition to the allowance of the amendment did not seem necessary and that the explanation did not justify an extension. The Commissioner also found that the public interest was in not allowing the extension so that this opposition, and the substantive opposition, could be determined expeditiously. Lockwood was not successful and costs were awarded against Lockwood.

Orders