Bevan James Rieckie and Arthur Simpfendorfer v Calsil Limited

[1983] APO 44

In the Matter of the Patents Act 1952

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In the Matter of Application No. 527996 for Letters Patent by BEVAN JAMES RIECKIE and ARTHUR SIMPFENDORFER

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In the Matter of an Opposition thereto by CALSIL LIMITED

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In the Matter of an Objection to an Extension of Time for Serving Evidence in Support

DECISION OF A SUPERVISING EXAMINER OF PATENTS
     In this matter a Notice of Opposition was lodged at the Patent Office by the opponent on 29 June 1983.  Therefore, by virtue of sub‑regulation 55(a), the opponent had until 29 September 1983, within which to lodge its evidence in support.  However, on 19 September 1983, the opponent lodged a request under the provision of sub‑regulation 55(a) for an extension of time of three months to 29 December 1983, within which to lodge its evidence.  The applicants objected to this request in a letter to the Commissioner of Patents received at the Patent Office on 29 September 1983.
     The matter was set down for a hearing in Canberra on 25 October 1983.  Mr R. Wray, patent attorney, of the firm of R.C. Wray & Associates, represented the opponent.  The applicants were not represented and relied on written submissions made in the forementioned letter of objection and in a

further letter accompanied by six exhibits which was received on 13 October 1983.
         The circumstances in which, and the grounds upon which, this application is made are as follows:

"Further time is required to complete the preparation of the declarations comprising the Opponent's Evidence in Support and to obtain execution thereof".

The two bases upon which the applicants' objection to the extension of time being granted are founded, are, firstly, an understandable anxiety on their part to have the opposition resolved, particularly since they are of the opinion that an infringement situation exists, and, secondly, the extent of the time period they consider the opponent has had available to it to prepare its evidence.
         In matters of this kind, the onus is upon the applicant for the extension to justify that an extension of time is required in the circumstances.  I cannot accept the reasons provided in the application for extension as sufficient to discharge this onus.  The reasons merely state the obvious and in no way provide justification for an extension of time.  Mr Wray did, however, expand  upon these reasons at the hearing, and provided a statutory declaration by himself attesting to the truth of various statements made by him in the course of the hearing.  He also provided a draft of a statutory declaration by an officer of the opponent company, a fully executed version of which was received subsequent to the hearing, on 31 October 1983, and was made by Kelvin Keith Webster, Administration Manager of Calsil. This latter declaration turned out to be of little assistance to me in this matter, since it merely revealed that firstly, the opponent has manufactured "for some time" reinforced concrete slabs of the basic type with which the present invention is concerned, a drawing of the opponent's slab being annexed to the declaration, secondly, that "The Company is concerned that the grant of a Patent on Application No. 527996 will have serious repercussions on its ability to continue the manufacture of reinforced concrete slabs referred to above", this being consistent with the applicant's allegation of infringement, and, thirdly, that "The Company has instructed its patent attorneys, that the Opposition in respect of Australian Patent Application No. 527996 is to be pursued vigorously and that they are to ensure that the Evidence in Support is as comprehensive as is possible".
         I am satisfied that the assurances given in this regard given by Mr Wray and in the Webster declaration are sufficient evidence at this stage that the opponent is serious in its opposition.  I also feel bound at this stage to accept at face value claims made by Mr Wray that the opponent has evidence of prior user and therefore has suitable grounds for its opposition, although I was unable to reconcile the statement in Mr Wray's declaration that "On 23rd October, 1983 R.J. Homan made a statutory declaration concerning the use of reinforced concrete slabs for transportable houses prior to the priority date of the claims of Application No. 527996" with the fact that Mr Wray's statutory declaration, is dated 20 October 1983.
         However, I am concerned that there is little evidence before me to substantiate the opponent's contention that it has been diligent in this matter.  Mr Wray made the point, which I accept, that, the finalization of the evidence in support must await the acceptance of the application in order that the final forms of the claims, to which most the evidence will be addressed, be known.  This was particularly so in the present case as the claims were amended substantially during prosecution.  However, as the applicants have pointed out in their submissions, the opponent has been aware of the content of the complete specification since 7 January 1982, and it would not in my opinion be a time consuming task to tailor evidence of prior user to relate to the final form of the claims given that the nature and extent of the invention should have been reasonably clear from the complete specification at that time.
         I am also at something of a loss to understand the rationale behind the statement made by Mr Wray that:

"It is also necessary that the two professional engineers give serious consideration to what can best be described as the 'design criteria features' introduced into claim 1 viz:

'the floor slab has an area of at least 34m2' in page 12 line 9 and

'having a thickness between 25mm and 75mm' page 13 line 2."

As for the claim by Mr Wray that:

"It is also necessary to give serious consideration as to whether or not the complete specification as accepted comply with Section 40 of the Act",

it would appear that ordinarily the three month period allowed by sub‑regulation 55(a) should be ample time for a competent patent attorney to "give serious consideration" to any matters involving section 40.
         Mr Wray also indicated that the opponent was to make use of a document which was the subject of a section 57(1) notification by another party, and raised a general plea, without going into specifics, of the need for time for the consideration of the evidence so far obtained as regards the question of obviousness.  In view of the non‑commital nature of the submissions made by Mr Wray in this regard, I consider it inappropriate to attach much weight to them.
There is, however, a further matter that I must give due consideration in considering whether or not to grant this request for an extension of time in which to serve evidence in support and that is the public interest involved. Mr Wray drew my attention to the remarks made by Kitto J. in the case of Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co., 120 CLR 136 at page 143:

"In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on its merits, rather than that it should be shut out in consequence of a

failure in procedure, lamentable though that failure may be."

Mr Wray made the point that a refusal on my part to allow this request would effectively terminate Calsil's opposition.  I find that this factor of the public interest, when considered in light of the prospect of the opponent being able to produce important evidence in this matter, is sufficient to overcome any reservation I might have concerning the degree of diligence with which the opponent has so far acted.  I am mindful also that this is the first extension sought so far by the opponent.
         I have therefore concluded that the extension should be granted.  On the question of costs, however, as previously noted the circumstances and grounds stated by the opponent in its application for the extension of time are to a large degree uninformative in their content.  In view of this, I think it appropriate that I should make no award of costs, and that each party should bear its own costs.

P. HEATHCOTE
Supervising Examiner of Patents