British-American Tobacco Company Limited v Philip Morris Limited

[1990] APO 35

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No. 573088 by BRITISH‑AMERICAN TOBACCO COMPANY LIMTIED, opposition by PHILIP MORRIS LIMITED and objection to extension of time under Reg. 55 to serve evidence‑in‑support.

Background
         Philip Morris lodged its notice of opposition on 23 November 1988.  Five extensions of time had been allowed to 23 May 1990 to serve evidence‑in‑support of the opposition, when an application was made for a sixth extension.  British‑American Tobacco Company objected and the matter was heard in Canberra on 2 July 1990.  In a decision dated 30 July 1990 I allowed the sixth extension to 23 August 1990.
         Philip Morris subsequently lodged two more applications for extension of time to 23 September and 23 November 1990.  British‑
American Tobacco Company objected to these extensions and the matter was heard in Canberra on 8 October 1990; the patent applicant was represented by Mr Peter Heathcote, patent attorney, and the opponent by Mr Robert Kelson, solicitor.
Circumstances and submissions
         At the hearing on 2 July 1990 it was revealed that the opponent intended to serve another six declarations in addition to the four which had already been served on the applicant.  Five of

the said six declarations were served in the period extended to 23
September 1990.  The circumstances upon which the applications were made for the seventh and eighth extensions, relate inter alia to the last of the said six declarations.  The statement of circumstances indicates that the opponent's attorney has been actively attempting to finalize the declaration in recent months.  The declaration has been referred to Counsel who has recently been overseas and unable to attend to the matter.
         Mr Heathcote's submissions were directed essentially to the delay in opposition proceedings caused by the relatively large number of extensions of time; some points he made are as follows:

.Rothmans of Pall Mall, another opponent to the application managed to complete its evidence‑in‑support in a reasonable amount of time.

.Since a period of approximately 30 months has elapsed since acceptance "the balance should be swung in favour of the applicant".

.The applicant's interests are being prejudiced by the delay.

.The person who made the draft last declaration referred to above is in Australia most of the time and the declaration should have been finalized earlier.

.With regard to the declarations already served, much of the information therein was available well before the dates on which those declarations were made.  Thus, there has been unreasonable delay earlier in the proceedings.

.The opponent has failed to comply with an undertaking made at the first hearing that all the evidence‑in‑

support would be served by 23 September 1990.

Mr Kelson's submissions were directed essentially to the circumstances of the case over recent months; some of the points he made are as follows:

.There has been no deliberate delay on the part of the opponent and there is only one declaration to go.

.Mr Kelson has been diligently attending to the matter of this opposition despite other demands of a personal nature.

.The opponent considers that opinion of Counsel is necessary to properly prepare the declaration; Counsel in this case has knowledge of the relevant law and technology, and was due to return to Australia on 8 October 1990.

.The patent applicant has not stated what the deleterious effects of the delay are; uncertainty in the market for example is "not great" in this technology.

.The judgement of the Federal Court in Vangedal‑Nielsen v Commissioner of Patents & Anor. 33 ALR at 150 refers to the "desirability of operating the [opposition] system efficiently and without unreasonable delays"; Mr Kelson suggested that "desirability" implies that some delays may be justified.

Decision
         The opponent in this case has clearly established that there is a serious opposition by the amount of evidence lodged so far.  There have been delays, initially, in the serving of evidence, which I discussed in my earlier decision, but I am satisfied that the opponent has been diligently pursuing the matter since I allowed the sixth extension.  It is not essential in any opposition that the evidence is checked by Counsel, so I think that delay from Counsel would not generally be a particularly good reason for an extension of time, but under the present circumstances where the evaluation of evidence has been completed and where the finalization of the declaration is clearly imminent I think that such circumstances can be construed as a sufficiently good reason.  Thus, I think the opponent's interest and the interest of the public in completing the evidence‑in‑support outweighs the applicant's interest in no further delays.  Also, a delay of one more extension of time would not adversely affect the public in this case.  However, I think that it is not necessary to extend the time by three  months to 23 November 1990, since Counsel was due to return to Australia on 8 October 1990 and there is no need for six weeks to finalize the last declaration.  Consequently, I have extended the time to 23 October 1990 to serve evidence‑in‑support and both parties were informed of my decision by telephone on 17 October 1990.
Costs
         Often there is no award of costs made in extension of time cases where the extension is allowed because it is found that the patent applicant had some justification in objecting to the extension because the circumstances were not fully explained in the application for extension and only came to light at the hearing.  In my earlier decision I stated:

"that the amount of detailed explanation in the grounds should be somewhat proportional to the total amount of extended time; only by giving a full explanation is the patent applicant likely to be satisfied that the extension is justified."

For these present applications for extension of time I think that a full explanation has been given by the opponent and all the facts were before the patent applicant when it objected to the extensions.  Thus I award costs against British‑American Tobacco Company Limited.

(J.I. WELSH)

Attorneys for the applicant: Shelston Waters, Sydney