Bioflow Pollution Control Pty Ltd v Australian Resource Recovery Pty Ltd

[1992] APO 18

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Patent Application No 588403 (66200/86) by BIOFLOW POLLUTION CONTROL PTY LTD, opposition by AUSTRALIAN RESOURCE RECOVERY PTY LTD, and objection to extension of time to lodge evidence-in-answer.

BACKGROUND

Application 588403 was lodged on 8 December 1986.  It is associated with Australian provisional applications PH 3756 (filed 6 December 1985) and PH 4250 (filed 17 January 1986).

The patent office advertised acceptance of application 588403 on 14 September 1989.  Australian Resource Recovery Pty Ltd filed a notice of opposition on 4 December 1989.

The opponent applied for and received a total of 16 months extension of time to lodge evidence-in-support.  In a decision dated 19 September 1991, I granted an extension of time from 1 April 1991 to 1 July 1991 to lodge evidence-in-support.

In my decision to allow the final extension of time for lodging evidence-in-support, I gave the applicant until 19 December 1991 to lodge evidence-in-answer.  On 19 December 1991, the applicant applied for a three month extension of time to lodge evidence-in-answer.  The given reason was, "Further time is required to obtain the necessary evidence."

The opponent objected to this extension of time.  A hearing was set down for 14 February 1992.  Both parties declined to attend the hearing choosing instead to rely on written submissions.

OPPONENT'S SUBMISSIONS

The opponent listed the following objections to the extension of time.

1.  That evidence in support directed to all substantive issues in the Opposition was served on the applicant on 2 July, 1990, and took the form of a Statutory Declaration of John Kingston Pizzey, putting into declaratory form a record of interview with Mr. Ronald William McCormack.

2.  That the Declaration by Ronald William McCormack filed and served 1 July, 1991, did not raise any new substantive matter relevant to the Opposition, beyond those raised in the 2 July, 1990, declaration.

3.  That the Applicant has had more than sufficient time to "obtain the necessary evidence" in order to address the substantive issues raised in the evidence in support, the sufficient time being incidentally provided for the Applicant by the Opponent as a result of the Opponent's difficulty in obtaining execution of the 1 July, 1991, Declaration.

4.  That the Applicant had filed an objection to an extension of time sought by the Opponent to permit preparation and execution of the aforementioned 1 July, 1991, Declaration, based on the ground that the Applicant was "also becoming disturbed at the protracted nature of this matter...".

5.  That the Applicant's interest in this matter would be served by expeditious grant of the patent if of course that entitlement is established by consideration of the evidence supporting the serious and substantive grounds of opposition raised by the Opponent.

6.  That on the one hand, the Opponent has discharged its obligation to raise substantive and serious grounds of Opposition and that the Applicant appears not to have discharged its corresponding obligation to address those grounds in the time provided;  thus the applicant has not, in the present instance or throughout these protracted proceedings, demonstrated a serious intention to defend the Opposition.

7.  That the Applicant's interest in having sufficient time to prepare an adequate defence of this application has been preserved; the Opponent's interest in preventing the grant of a patent which may curtail its activities is threatened by the application for extension of time.

8. That the Applicant, in seeking an extension of time "to obtain the necessary evidence", has failed to discharge the burden of establishing an appropriate case to justify that extension, in accordance with the principles adduced in the decision of VANGEDAL-NEILSON v SMITH (1980) 33 ALR 144."

APPLICANT'S SUBMISSIONS

In its submission, the attorney for the applicant drew attention to the number and period of extensions granted to the opponent for filing evidence-in-support.  He compared the 19 months allowed for the opponent to the six months that this extension would provide for the applicant.

In answer to the opponent's submission, the applicant said,

"In this regard it must be borne in mind that when one reviews the submissions made by the Patent Attorneys for the Opponent in support of their objection, grounds 1, 2, and 3 are completely irrelevant.  Preparation of evidence-in-answer can only begin when all evidence-in-support has been reviewed.  It is not up to the Opponent to consider what issues in regard to this matter are substantive or non-substantive.  That is a matter for the hearing officer.

When one considers grounds 4, 5, 6, 7, and 8 of the statement of objection it is also respectfully submitted that these grounds are not relevant.  In any serious opposition, the evidence must be considered carefully and often support may be required by other parties in regard to establishment of certain facts.  We confirm that our client is treating this matter seriously and that evidence-in-answer will be lodged within the near future.  However further time is required to discuss all the relevant facts, prepare draft statutory declarations for review by the client and obtain opinions of other counsel if required.  Also additional time is required in order to check the accuracy of certain statements made in the evidence-in-support.

It therefore follows that for the same reasons as set out in the decision dated September 19 1991, the Applicant should be entitled to the present extension of time and indeed further time if considered appropriate.  Thus in short since a serious opposition is being contemplated the Applicant should have appropriate time to prepare his case.  This means that all relevant issues must be canvassed to obtain a valid and non-worthless patent to preserve the public interest."

The applicant finalised its submission with a request for costs and a copy of a trademarks decision in which costs were awarded.

RELEVANT LAW

The Federal Court of Australia has considered the provisions of the industrial property legislation material to extensions of time in opposition proceedings in Vangedal-Nielsen v Smith (1980) 33 ALR 144 and Lyons v Registrar of Trade Marks (1983) 50 ALR 496; 1 IPR 416. These decisions establish that:

The party seeking an extension of time carries the burden of establishing an appropriate case to justify that extension.  That is, the applicant for an extension carries the onus of proof.  An extension cannot be granted merely because the other party has been unable to show that an extension should not be granted.

The applicant for extension of time must make out a `proper case justifying extension'.

In deciding whether the applicant for an extension of time has made out a proper case justifying extension, the commissioner must take all relevant considerations (and no others) into account.

These cases also show that in meeting the onus upon it, the applicant is not limited to reliance upon facts proved by formal evidence adduced by it.  It may be able to point to background material or to material publicly available or even to facts proved by the other party's evidence.  Factors to be considered in deciding whether to grant an extension of time include:

the public interest;

the applicant's interest in having sufficient time to prepare an adequate defence of its application; and

the opponent's interest in expeditiously preventing the grant of a patent which may curtail its activities.

DECISION

I agree with the applicant's submission, that the first three items on which the opponent has based its objection are not relevant.  An applicant cannot be expected to have the form of its evidence-in-answer `cast in concrete' until it has seen all the evidence-in-support.

I also agree with the applicant's submission that the fourth ground of objection is not material.  The fact that the applicant was `becoming disturbed at the protracted nature of this matter' is not material when it is considered in context.  The applicant made this statement at a time when delay was being caused because the opponent could not get a potential witness to sign a declaration.  The applicant's concern at that delay is not material to the issue of whether the applicant has been allowed a proper time to prepare its evidence-in-answer.

With regard to the fifth ground of objection, it is of course true that the applicant's interest is served by the expeditious grant of a patent.  `Justice delayed is justice denied.'  It would, however, be a greater denial of justice to deny the applicant a proper time to prepare its evidence-in-support.

With regard to the sixth ground of objection, there is no necessary nexus between failure to file evidence-in-answer within the initial three months, and failure to demonstrate a `serious intention to defend the opposition'.  (The justification given by the attorney for the applicant for the extension is,

"In any serious opposition, the evidence must be considered carefully and often support may be required by other parties in regard to establishment of certain facts.  We confirm that our client is treating this matter seriously and that evidence-in-answer will be lodged within the near future.  However further time is required to discuss all the relevant facts, prepare draft statutory declarations for review by the client and obtain opinions of other counsel if required.  Also additional time is required in order to check the accuracy of certain statements made in the evidence-in-support.")

In respect of the seventh and eighth grounds of objection, I accept that the applicant has not had sufficient time to adequately go through the necessary processes to prepare its evidence-in-answer.

The activities for which the extra time is required are appropriate to the defence of this opposition.  Having regard to the nature of the evidence in support, the requirement for extra time to fully consider it is reasonable.  Also as demonstrated by the opponent, the preparation and obtaining of statutory declarations can take time.

When deciding whether or not to allow the extension, I must consider the interests of all concerned parties.  The public interest is best satisfied if all relevant evidence is considered in the hearing of the opposition.  This favours allowing the extension.  It is in the applicant's interest to have sufficient time to prepare an adequate defence of its application.  Counter to this is the opponent's interest in expeditiously preventing the grant of a patent which may curtail its activities.  I think the balance of these interests is in favour of allowing the extension of time.  Accordingly, I grant the applicant an extension of time until 19 March 1992 to lodge evidence-in-answer.

COSTS

The applicant has submitted that,

"It is ... requested that if the Decision is granted having regard to the scale of costs in Applicant's favour that an award of costs be granted having regard to the scale of costs in Schedule 8 of the Patent Regulations.  It would certainly seem that Item 9 and also the Hearing Fee is applicable in any award of costs.

In this regard it is noted that the Hearing Officer in his September 19 1991 decision did not consider an award of costs appropriate where both parties lodge written submissions.  However an award of costs was recently awarded in a trade mark matter regarding an extension of time and we attach herewith a copy of the relevant decision.

It is also believed that since the current objection by the Opponent can only be regarded as unduly vexatious ... the Applicant should be entitled to his costs in this matter."

I do accept that, if it is appropriate to award costs, then costs should follow the event.  It appears to me that the issue of an award of costs where neither party has attended the scheduled hearing may not have been comprehensively addressed in any previous patent office decision.  I note that both the scale of costs which was followed under the 1952 legislation, and the scale of costs in schedule 8 to the 1991 regulations, include items which refer to a `hearing' or to `attendance at hearing'.  Whether any item from the scale of costs is payable in the present circumstances is an issue which is most appropriately determined on the taxation of costs.

I accordingly award costs in favour of the applicant.

Allen Evans
Delegate of the Commissioner of Patents

Attorneys for the applicant:  Cullen & Co, Brisbane
Attorneys for the opponent :  Pizzey & Co, Brisbane