Bridgestone Tire Company Limited v. Australian Wire Industries Pty. Ltd.

[1983] APO 29

In the Matter of the Patents Act 1952

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In the Matter of Application No. 526174 by

BRIDGESTONE TIRE COMPANY LIMITED

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In the Matter of an Application under Section 160 by AUSTRALIAN WIRE INDUSTRIES PTY. LTD. to Extend the Time for Lodging Notice of Opposition under Section 59.

DECISION OF THE COMMISSIONER OF PATENTS:
         Patent application No. 526174 was accepted on 23 December, 1982 and notice of opposition was lodged with the Office on 24 March, 1983, that is, one day late.   The prospective opponent sought an extension of time for that one day pursuant to section 160(2).   The declaration supporting the extension of time was lodged with the Office on 23 June, 1983.   The applicant was notified of the application made under section 160(2), it objected to the application and indicated its wish to be heard.
         The matter was heard in Melbourne on 5 August, 1983.   Mr. G. Noonan of Davies & Collison, patent attorneys, appeared for the prospective opponent and Mr. A. Ward of Clement Hack & Co., patent attorneys, appeared for the applicant.
         Mr. Ward in opposing the extension of time submitted:

.section 160 of the Act did not authorize extensions of time for the lodgement of notices of opposition under section 59 of the Act,

.    section 160 provided remedies for failures to meet times by the patent office or applicants prosecuting patent applications.   The section did not confer benefits or provide remedies to third parties,

.even if section 160 provided a benefit to a potential opponent to the sealing of a patent application, the Commissioner in exercising the discretion conferred on him under the section should give due weight to the fact that the opponent had not behaved in a timely and diligent fashion in that the declaration in support of the application for extension of time was not lodged until some three months after the application was lodged,

.the declaration in support of the application did not clearly specify who made the error or omission nor did it specify what was the nature of the error or omission,

.the public interest involved strongly suggested that the application be refused.

Mr. Noonan in reply submitted that:

.there was no decision of a court which had applied section 160 to the time allowable under section 59,

.it was implicit in the decisions of the High Court in APM v. CIL and the Federal Court in Lehtovaara's Application that section 160 was a broad remedial provision which applied to all time requirements of the Act except for those provisions expressly excluded,

.the declaration shows that Mr. Truman was the particular employee of the prospective opponent responsible to ensure that notice of opposition was processed in a timely fashion through the prospective opponent's organization and this he failed to do,

.the delay in lodging the declaration was not unreasonable in the light of the fact enquiries had to be made to ascertain the nature of the error or omission and to ensure that the reasons when ascertained were clearly set out in the declaration.

The matters which I considered required decision were whether section 160(2) applied to the time allowed in excess of the three months already provided as a discretionary extension of time under section 59(1) and if so, whether the prospective opponent is entitled to the extension of time sought under section 160(2).
         I consider that section 160(2) is a broad remedial provision.   This view is clearly expressed in the decisions cited by Mr. Noonan.   The remedies available under section 160(2) are not confined to applicants for patents.   The sub‑section provides the remedy to "the person concerned" and in my view is available to any person who has a right to take part in any proceedings under the Act.   This clearly includes an opponent or a potential opponent to the sealing of a patent.
         In this case, the prospective opponent has relied upon the declaration of Mr. Truman who has deposed that he made the decision to lodge the notice of opposition.   That decision was to be conveyed to a Mr. Stonier of BHP Melbourne who presumably would have implemented that decision.   The letter of instruction was to be signed by Mr. Truman's superior, a Mr. Ticehurst.   This letter, a copy of which was not produced, was left by Mr. Truman in Mr. Ticehurst's office on 21 March, 1983.   Mr. Ticehurst had not signed that letter on 23 March, 1983 when the matter was followed up by Mr. Truman.   The latter then processed the necessary instructions to Mr. Stonier.
         I agree with the submission of Mr. Ward that the declaration is unsatisfactory in many aspects.   The declaration does not explain the organizational relationships between Messrs. Truman, Ticehurst and Stonier.   It does not explain why Mr. Ticehurst had not signed the letter in a timely fashion, other than to infer that this was a consequence of Mr. Ticehurst's frequent absence from his office due to his making arrangements for a forthcoming overseas trip.   It gives no background explanation of what appears to be a very rigid chain of command or why oral instructions could not have been conveyed to Mr. Stonier.
         I accept the statement of Mr. Noonan why it took three months to provide the declaration and I do not consider that the applicant has been disadvantaged by this delay.   I have therefore rejected this fact from consideration in exercising my discretion.
         The one definite matter which emerges from the declaration is the failure of Mr. Truman to take appropriate action to ensure that the notice of opposition instructions were processed in a timely fashion through his organization.   Section 160(2) specifically provides a remedy for such an omission.  The fact that the delay was only one day is a further factor why I should decide in favour of the prospective opponent.   I therefore grant the extension of time sought by Australian Wire Industries Pty. Ltd.

(F.J. SMITH)