Bevan James Rieckie and Arthur Simpfendorfer v M.J. McGrath Pty Ltd

[1983] APO 45

IN THE MATTER of the Patent 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 M.J. McGRATH PTY. LTD.

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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 24 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 20 September 1983, the opponent lodged a request under the provision of sub‑regulation 55(a) for an extension of time of three months to 24 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 P. Kildea, patent attorney, acting on behalf of the firm of Arthur S. Cave & Co., 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:

"We have been advised that there is a second opposition against the present application and we are evaluating the evidence obtained from the second opponent, so as to be in a position to present a stronger [sic] case as possible."

The "second opponent" referred to is CALSIL LIMITED.  This opponent has also not lodged its evidence in support within the time allowed by sub‑regulation 55(a), and its request for an extension of time to do so has also been subject to a formal objection by the applicants Rieckie and Simpfendorfer.  A hearing in relation to that matter took place before me on the same day as the present matter, and my decision in regard to that matter is issued herewith.

The applicant's objection to this extension is founded upon two basic reasons;  firstly, an understandable anxiety on their part to have the opposition resolved, especially 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.

At the outset of the hearing Mr Kildea conceded that the onus was on the party seeking the extension of time to justify the extension being granted, and in order to achieve this it had to show the following:  that there is a serious opposition;  that it has got good grounds;  that it has so far acted diligently;  and that it is not needlessly delaying proceedings.  Mr Kildea submitted that the opponent has satisfied all these criteria.   He also submitted that the party preparing the evidence must be given a reasonable amount of time to prepare its evidence.

I am not completely satisfied that the facts of the matter do indeed fit all the criteria stated by Mr Kildea.

Certainly, the opponent's interest in this application does date back to at least 2 June 1982, when a Notice under sub‑section 57(1) was lodged at the Patents Office.  Further, Notice of Opposition by the opponent was lodged within the initial three months period permitted by sub‑section 59(1).  Also, Mr Kildea indicated at the hearing that the extension now sought was "probably the only extension" that would be required, and that "we are confident that evidence‑in‑support will be served within the time now sought".  Therefore, on the face of it, there would appear at this stage to be a serious opposition in train.

Furthermore, it was also revealed by Mr Kildea that the main portion of the opponent's evidence was to be expert evidence from a Professor Irvine from the School of Civil Engineering (at what institution was not disclosed), which is to be concerned primarily, as I understand it, with the paper which was the subject of the sub‑section 57(1) notification entitled "Pretensioned Floor and Roof Slabs With High‑Strength Deformed Bars" by K.V. Mikhailov and G.I. Berdichersky.  Mr Kildea stated that this evidence "was expected very soon".  This paper was cited in an Examiner's report during prosecution of the application to acceptance, and from a cursory perusal it would appear that it may provide suitable grounds for the opponent's opposition.

On the question, however, of whether the opponent has been diligent and has not indulged in needless delay, I experienced some difficulty.  As the applicants have pointed out in their written submissions, the opponent has been aware of the content of the complete specification since 7 January 1982, and has been aware of the existence the paper cited in the sub‑section 57(1) notification since at least before 2 June 1982.  I accept the point made by Mr Kildea that the finalization of evidence must await the acceptance of the application, in order that the final form of the claims, to which most of the evidence will be addressed, be known.  In this case there has been considerable amendment of the claims during prosecution.  Even so, given what appears to be the relatively straightforward nature of the task in the present situation, the three month period after acceptance allowed by sub‑regulation 55(a) for the performance of that task does not appear unreasonable. 

A further difficulty in this matter is that the reasons given in the application for the extension of time do not appear to relate to the evidence of Professor Irvine.  They appear to be concerned with only evaluating evidence provided by the other party opposing the grant of a patent upon application 527996.  In arguing that this constituted a legitimate ground for an extension of time in accordance with sub‑regulation 55(a), Mr Kildea cited the decision of the Hearing Officer in the case of Hecla Electric Proprietary Limited and Australmac Limited v. National Presto Industries Inc. 1966 AOJP 1413, at 1427:

"The question of obviousness must be answered objectively having regard to the whole body of information publicly available at the priority date of the claims.  When determining this ground of opposition, my deliberations cannot be limited merely to a consideration of the prior documents lodged in evidence by one Opponent to the exclusion of the prior documents lodged by the other Opponent.  I must take into account all prior documents which have been lodged by both Opponents."

With due respect, I am unable to see this passage as justifying one opponent in a dual opposition proceeding delaying the lodgement of its evidence in support of its opposition in order to evaluate the other party's evidence.

In the first place, the view expressed by the Hearing Officer in the quoted passage is based on an interpretation of the law on obviousness which was largely overturned by the High Court of Australia in the case of Minnesota Mining and Manufacturing Company and Another v. Beiersdorf (Australia) Limited, 144 CLR 253. The Hearing Officer's view assumes that the knowledge available for the determination of obviousness consists of everything disclosed by the literature on the subject (including prior specifications), and revealed by the articles then in use and of the common general knowledge. It is understandable that an opponent in that situation would wish to have every possible available piece of information at his disposal in order to make out a case of obviousness. The High Court decision in the case of Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Limited (supra) restricted the knowledge available for the determination of obviousness to just the common general knowledge in the field of the invention. Quite clearly, this is a different matter to what has hitherto been the situation. Two opponents could use entirely different sources of information to arrive at what should be a similar conclusion as to the state of common general knowledge in a particular field, with there being no advantage to be obtained in pooling their evidentiary material.

Secondly, the Hearing Officer was not concerned with what one or other opponents included in its evidence, but rather what he as a Hearing Officer ought to be able to have available to him for consideration in his determination of the oppositions.  He went on to state:

"Quite apart from these considerations, I am bound in the public interest to consider any relevant prior art brought to my attention before the issue of my decision; taking care, of course, that in doing so no party is prejudiced. (Osterstron and Wagner's Application 49 RPC 565; Hughes and Kennaughs Application 27 RPC 281.)"

Thirdly, Mr Kildea indicated that the evidence to be provided by the other opponent concerned prior user of the invention.  In light of the current state of the law in relation to obviousness, such evidence, unless it relates to common general knowledge, would be irrelevant to the consideration of obviousness.

For these reasons I am unable to perceive any merit in the stated grounds for requesting the extension of time to lodge evidence.  Evaluation by McGrath of the other opponent's evidence is not, in my opinion, sufficient justification for an extension of time in the present circumstances, given that the applicant would be disadvantaged by any delay in the resolution of the opposition.

I am mindful, however, that the opponent McGrath was stated by Mr Kildea at the hearing to have important other evidence in the preparation, namely, the evidence of Professor Irvine, and that this would probably be lodged within the extension of time now sought. I am also mindful that until this matter of an extension of time to serve evidence the opponent has shown no hint of being dilatory in its actions. Mr Kildea also spoke of the relatively large amount of time which is required to acquire evidence in relation to obviousness, without giving any details of what form that evidence, if any, might take, but at the same time holding out promise that such may be produced. I am also required to take account of the public interest and in this regard Mr Kildea drew my attention to the remarks made by Kitto J. in 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."

I have concluded, therefore, that, taking into account all the circumstances, I should accede to opponent's request and grant the extension sought by it. 

On the question of costs, however, as I have indicated above, I consider the reasons and grounds given by the opponent in its application for the
extension of time did not justify the extension of time and may have resulted in the applicant objecting to such an extension and bringing this matter to a hearing.  Further, in reaching my decision to allow the extension of time I have relied on reasons provided by the opponent at the hearing which are different to those given in original application for extension and considerations of the public interest.  Accordingly, I award costs in this matter against the opponent.

P. HEATHCOTE
Supervising Examiner of Patents