Bror Olof Hagar v. Koppers Australia Pty. Ltd

[1983] APO 11

In the Matter of the Patents Act 1952

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In the Matter of Patent Application 524591 in the Name of BROR OLOF HAGAR

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In the Matter of Opposition thereto by KOPPERS AUSTRALIA PTY. LTD.

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In the Matter of an Objection by the Applicant to an Application by KOPPERS AUSTRALIA PTY. LTD. for Extension of Time for Serving Evidence‑in‑Support.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         This matter concerns an application for an extension of time in which to serve evidence‑in‑support.   The opponent, Koppers Australia Pty. Ltd., lodged the notice of opposition under section 59 on 21 December, 1982 and therefore the time prescribed within which to serve evidence‑in‑support expired on 21 March, 1983.   On 17 March, 1983 the opponent lodged an application under regulation 55 for an extension of time of three months to 21 June, 1983.   Bror Olof Hagar objected to the application for extension of time and the matter was set down for hearing and was heard in Canberra on Friday, 22 April, 1983.
         The opponent, Koppers Australia Pty. Ltd. was represented by Mr. W.L. Thomson, patent attorney Canberra, who acted on behalf of the opponent's patent attorneys, Spruson & Ferguson.   Bror Olof Hagar chose not to be represented at the hearing relying instead on written submissions prepared on his behalf by Mr. C.M. Bentley, patent attorney, of Clement Hack & Co.

The opponent in presenting the application for extension of time stated the grounds to be:

"Further time is required in which to put the evidence in form for lodgement.   The person responsible for this matter in the opponent;s company has been on annual leave and there has been some delay in receiving specific information and instructions in this matter.   We are currently undertaking the preparation of evidence to put it into final form and believe that the matter should be finalised within the proposed extension period."

Bror Olof Hagar, in response to these grounds, in the written submission prepared by Mr. Bentley; stated:

"In support of the applicant's objection to the opponent's application for extension of time, it is pointed out that the opponent is a large Australian Company with extensive, inter‑

national resources, including its parent company Koppers Corporation, U.S.A., whereas the applicant is a sole inventor/applicant based in Sweden, hampered by limited resources and necessary overseas communication with his Australian counsel.

It is also submitted that the opponent's stated grounds are not very convincing.   Surely the person responsible for this matter in the opponent's company was not on annual leave for the major part of the time in question, namely from December 21, 1982 to March 21, 1983 and surely, taking into consider‑

ation the resources of the opponent company, someone else in the opponent's company was sufficiently competent in the wood preservation field to handle the matter in his absence or take over the matter completely.   After all, the opponent's notice of opposition does state that "we are manufacturers, inter alia, of the same type of product as that embraced by the application under opposition".

Furthermore, the opponent's U.S. parent, Koppers Corporation U.S.A., has been in correspondence with the applicant and expressed an interest in the invention and the applicant supplied information to that company on November 8, 1982.  We wrote to the Attorneys for the opponents on February 4, inviting them to comment on this situation but we received no reply."

I requested Mr. Thomson to direct his submissions to the comments made in Mr. Bentley's letter setting out the reasons for objecting.
         Mr. Thomson commented on those points by first pointing out that the relative size of litigants in actions under the Patents Act is not a matter for consideration however this matter is somewhat related to the points raised in the third paragraph of the correspondence quoted above which addresses the international nature of the opponent company.   He continued to explain that the opponent is the Australian Company acting in this matter autonomously, the Koppers Corporation U.S.A. having no interest in this action.   It further appears that a part owner of Koppers Australia Pty. Ltd. is a major competitor in the U.S.A. of Koppers Corporation U.S.A. and for this reason there is little co‑operation in matters of a technical nature between the Australian Company and the U.S. Corporation.
         As to the question of time raised in the second paragraph of the applicant's submission there is considerable explanation of this given in a statutory declaration of Anthony John Witheridge, Technical Services Manager of the Preservatives Group in the Timber Preservation Division of the opponent company.   Mr. Witheridge being the sole person within the company since the resignation on 23 December, 1982 of the then Technical Director.   Mr. Witheridge indicates that the opponent had become aware of the subject matter of the application around 8 December, 1982 and lodged the opposition on 21 December, 1982, two days before the time for lodging opposition expired.   At this stage the Christmas‑New Year holiday period occurred and in early February Mr. Witheridge took 2 weeks recreation leave.   It is true that, on this point, the reason for seeking this proposed extension of time appears to suggest that the recreation leave extended over a greater period however the above referred to declaration establishes the two week period only but goes on to establish a further "5 to 6 weeks" absence from Sydney, his home station, in attending to plant problems "with a timber preservation plant in Victoria in which my presence is mandatory".
         In the declaration Mr. Witheridge further explains the actions taken in preparation to date of the evidence‑in‑support which included the sorting of material presented by the Company Librarian and Mr. Thomson explained efforts to secure the services of expert witnesses, in respect of the known state of art, the first of which, Mr. Greaves, proved to be unavailable and thus subsequent negotiations with a further witness became necessary.
         Included in the reasons for seeking this extension it is stated that "some delay in receiving specific information and instructions" has occurred and it was explained by Mr. Thomson that the reference to "specific inform‑
ation" was in respect of the above discussed expert's evidence.   The matter of "instructions" refers to the inability of Mr. Witheridge, through pressure of work referred to earlier, to investigate the material gathered for his consideration by the company's librarian and difficulty in securing the services of a suitable expert witness resulting in an inability to communicate meaningful information to their patent attorney for the latter's preparation of the evidence‑in‑support.   Mr. Witheridge's declaration concludes with a statement which reads:

"However, it is my understanding that my Company's Patent Attorneys, Spruson and Ferguson, can prepare a Declaration from myself and pursue the necessary correspondence with Dr. Greaves to allow them to present sufficient evidence in support of this opposition within the proposed extension period."

Mr. Thomson suggested it was his understanding that such would be the case.   In fact part of the evidence‑in‑support was received at the Melbourne Patents Sub‑Office on Thursday, 21 April, 1983 and served on the applicant on the same day.
         On the basis of the opponent's efforts so far in pursuing the preparation of evidence, as set out in the Witheridge declaration and the fact that part evidence has been served, I am satisfied that the opponent is mounting a serious opposition.   Consequently I grant an extension of time to serve evidence‑in‑support to 21 June, 1983 as requested by the opponents.
         Both parties made submissions in regard to costs.   As I have granted the extension on the grounds set out in the application, as expanded upon at the hearing, I award costs against the objector, Bror Olof Hagar.

(P.A. KILBORN)