Bioflow Pollution Control Pty Ltd v Australian Resource Recovery Pty Ltd

[1991] APO 41

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-support.

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.  On 1 December 1989, Australian Resource Recovery Pty Ltd filed a notice of opposition.  The opponent filed a `substitute' notice of opposition on 4 December 1989.  Both parties appear to have accepted that the effective date of the opposition is 1 December 1989.
     On 28 February 1990, the opponent applied for an extension of time of three months (to 1 June 1990) to lodge evidence in support.  The applicant did not object to this extension of time, and the Patent Office allowed it.  The opponent sought a further extension of time of one month.  Again the applicant did not object, and the Patent Office allowed the extension.
     On 2 July 1990, the opponent filed part of the evidence-in-support.  This was a statutory declaration by John Kingston Pizzey, with ten exhibits.  At the same time, the opponent requested another extension of time of one month (to 1 August 1990) to lodge the remainder of the evidence-in-support.  The ground stated for the extension of time was

to finalise and obtain execution of declarations in the form of Evidence in Support by Ronald William McCormack and others and serve same upon the applicant.

The applicant did not object and the Patent Office allowed the extension.
     The opponent asked for further extensions of time on:

1 August 1990 (two months to 1 October 1990);
3 September 1990 (two months to 1 December 1990);
28 November 1990 (two months to 1 February 1991);
21 January 1991 (one month to 1 March 1991); and
1 March 1991 (one month to 1 April 1991).

These extensions of time total eight months.  On each occasion the opponent gave the following ground for an extension:

Additional time is required to finalise and obtain execution of declarations in the form of Evidence in Support by Ronald William McCormack and others and serve same upon the applicant.  The said McCormack has at this time on the advice of his legal advisers, declined to execute the Declaration in Evidence on the grounds that his execution of the document may open him to potential civil action.  The opponent is presently offering to indemnify said McCormack in this regard such that the declaration may be executed and served upon the applicant.

The applicant did not object to any of the extensions, and they were granted by the Patent Office.
     On 28 March 1991, the opponent applied for another extension of time of one month to 1 May 1991.  This application relied on the same ground.  On 3 May 1991, the applicant objected to the extension.  Both the applicant and the opponent indicated that they did not want to attend a hearing, but would rely on written submissions.
     Since then the opponent has made three more requests for extensions of time.  Specifically, on

2 May 1991 (one month to 1 June 1991),
23 May 1991 (one month to 1 July 1991), and
26 June 1991 (one month to 1 August 1991).

On 1 July 1991, the opponent lodged a declaration by Ronald William McCormack, completing the evidence-in-support.
Application and Submissions
     The specification and claims of the application are directed to a process for purification of waste material such as fats, grease, vegetable oil and the like, and a purification plant for use in this process.
     The opponent gave eight grounds in its notice of opposition.  They may be summarised as follows

(a)obtaining

(b)prior claiming in an application

(c)prior claiming in a patent

(d)prior publication

(e)claims not for a manner of manufacture

(f)obviousness

(g)not novel

(h)the specification does not comply with section 40.

The evidence for which the extension of time is needed relates to the ground of obtaining.
     On 13 June 1991, the opponent's attorneys filed a written submission outlining their actions in relation to this application.  The following is a summary.

1.1 December 1989.  Pizzey & Co filed a notice of opposition.

2.18 December 1989.  They wrote to Transpacific Industries Pty Ltd seeking a declaration from Mr Evers (the inventor) or someone in an appropriate position attesting to the circumstances under which Fat Recovery Pty Ltd acquired the rights to the invention.

3.Mr Evers had left the country and could not be contacted.

4.28 March 1990.  Pizzey & Co interviewed Mr McCormack, of Transpacific Industries Pty Ltd.  They used this interview as the basis for drafting a declaration.

5.2 July 1990.  They filed a declaration by Mr John Pizzey.  This evidence sought to show that a substantial ground of opposition would be obtaining and indicated the nature of evidence which Mr McCormack may be able to give in a declaration.

6.12 July 1990.  They sent a draft declaration to Mr McCormack.

7.1 August 1990.  Mr McCormack had not replied, so Pizzey & Co phoned him.

8.29 August 1990.  Butts & Barkley, solicitors for Mr McCormack, wrote requesting an indemnity for Mr McCormack.

9.16 January 1991.  Cannan and Peterson, solicitors for the opponent, advised that Mr Peabody (who was needed to sign the indemnity) was overseas.

10.19 February 1991.  They ascertained that Mr McCormack's solicitors had received the indemnity.

12.Between 15 April 1991 and 11 June 1991, they sent various reminder letters to Mr McCormack, through his solicitors.

(Subsequently, on 1 July 1991, Pizzey & Co filed and served a declaration by Mr McCormack.)
     The submission concluded with the assertion that this chronology shows that the opponent had taken all possible actions to obtain the declaration.  It also stated that they believed that subpoenaing Mr McCormack may endanger his health.
     The applicant's patent attorneys made a submission to the effect that:

the `same identical reason' has been quoted for each extension of time since 1 August 1990;
adequate time has now been allowed for obtaining Mr McCormack's statutory declaration; and
the applicant is `becoming disturbed by the protracted nature of this matter'.

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-Nielson 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 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 in ensuring that worthless patents are not granted because sufficient time has not been allowed to raise an objection or to prepare and serve evidence in support of an objection;
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 will curtail its activities.

Decision
     It is in the public interest that the hearing of the opposition should be complete.  By this I mean that the hearing officer should have the benefit of an address from both parties on all the material which has been prepared.  If the extension of time is not granted, the declaration of 1 July will not be part of the evidence, and the opponent will not be allowed to refer to it.
     It is also in the opponent's interest that I grant the extension of time.  The declarations that have been prepared establish that it has a `serious opposition'.  It is in the opponent's interest that it be allowed to address Mr McCormack's declaration in support of that opposition at the hearing.
     A counterbalancing consideration is the applicant's interest in an expeditious grant of the patent which it believes it is entitled to.  However, allowing the present extension of time will not, of itself, cause further delay.  If I do not allow the extension of time, the opposition will still proceed to a hearing based on the evidence in Mr Pizzey's declaration.  If I do allow the extension of time, the hearing will be based on Mr Pizzey's declaration and on Mr McCormack's declaration.  I do not think that the additional consideration of Mr McCormack's declaration at a hearing will cause any significant further delay.
     I am of the opinion that, on balance, I should grant the extension of time.  I accordingly grant the opponent an extension of time, to 1 July 1991, to lodge the evidence-in-support of the opposition.  I direct that the time for lodging evidence-in-answer shall run from the date of this decision.
Costs
     As this objection was decided on written submissions, none of the items in the scale of costs is applicable and I do not make any award of costs.

(ALLEN EVANS)
   Delegate of the Commissioner of Patents

Attorneys for the applicant:    Cullen & Co, Brisbane

Attorneys for the opponent :    Pizzey & Co, Brisbane