Bruce Allan Poltrock v an Wayne Ennor

[1986] APO 40

In the Matter of the Patents Act 1952

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In the Matter of Application No. 552035for a Patent by BRUCE ALLAN POLTROCK

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In the Matter of Opposition thereto by IAN WAYNE ENNOR

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In the Matter of an Application for Extension of Time under Section 59.

DECISION OF A SUPERVISING EXAMINER:
Background
         BRUCE ALLAN POLTROCK lodged a provisional application entitled "Agricultural Implement Having Means for Clearing Accumulated Earth Therefrom" on 5 May, 1983.  This was followed by a complete after provisional specification No. 27720/84, whose acceptance was advertised under application No. 552035 on 22 May, 1986.
         On 22 August, 1986 IAN WAYNE ENNOR lodged an application under S.59(1) for an extension of time until 22 November, 1986 in which to lodge a notice of opposition to the grant of application No. 552035.  POLTROCK objected to the extension of time and so the matter was set down for a hearing.  Before the date of the hearing both parties waived their right to be heard and lodged written submissions.

The circumstances and grounds in the application for an extension of time read as follows:

"I am in the process of ascertaining whether any prior publication or use of the invention claimed in application serial No. 552035 occurred prior to 5th May 1983, and I am also awaiting advice from the Commissioner of Patents in relation to Section 158(2) of the Patents Act 1952. Thus, more time is required to obtain information upon which a decision to lodge a notice of opposition may be based."

Submissions
         The submission made on behalf of ENNOR reads as follows:

"Firstly, we are hampered by a complete lack of grounds underpinning the objection.  In anticipation of any suggestion that the proposed opposition is frivolous, we point out the prospective opponent is the applicant for patent in Australia under No. 20530/83 for an invention entitled 'Agricultural Implement', and is a manufacturer of agricultural products generally, trading under the name Ennor Engineering.  He is clearly a 'person interested', although it is submitted that this stage in the matter is not the time to determine locus standi.

The prospective opponent understands that apparatus embodying the invention of application serial No. 552035 was publicly displayed prior to the priority date of 5th May 1983.  At the time of lodgement of the extension application, he had not obtained hard evidence that such publication had occurred prior to that date.  He was also awaiting the results of an enquiry to the Patent Office, to establish whether any such prior exposure was protected by Section 158.

In summary, there would appear to be no basis for the present objection.  A request for such an extension is, after all, a preliminary step to the possible lodgement of a Notice of Opposition.  Such Notice may not be lodged.  In this case it depends on the results of investigations being carried out at present by the prospective opponent.  An extension of this type should only be refused, if there is power to do so, when it is absolutely clear that the proceedings are solely of a frivolous nature.  It should be noted that extensions of time under Section 59(1) are, quite properly, granted as a matter of course."

The submission made on behalf of POLTROCK refers to the decision of the Federal Court in the Vangedal‑Nielsen case (Vangedal‑Nielsen and Others v. Smith 3 ALR 144). The submission then reads as follows:

"1.In the present case, the prospective opponent has advanced two reasons upon which he requires an exercise of the Commissioner's discretion in granting an extension of time.  In our submission, neither of those reasons establishes that there is evidence that there was a potentially serious opposition and, accordingly, the Commissioner cannot grant the extension of time sought, following the aforementioned precedent.

2.More particularly, the two reasons advanced on behalf of the prospective opponent are as follows:

(i)"I am in the process of ascertaining whether any prior publication or use of the invention, claimed in Application Serial No. 552,035 occurred prior to May 5, 1983."

It is plainly clear from this statement that the prospective opponent is merely in the process of ascertaining whether there is any prior publication.  Clearly, he has not provided to the Commissioner any evidence that he is in possession of any information upon which a serious opposition could be mounted.

(ii)The second reason advanced by the prospective opponent is as follows:

"I am also awaiting advice from the Commissioner of Patents in relation to Section 158(2) of the Patents Act 1952."

Again, it is clear that the prospective opponent has not given the Commissioner any notice or evidence of any serious opposition which could be mounted against the application in question.  All that is said in this reason is that the prospective opponent is seeking information from the Commissioner which might (or might not) result in founding a serious opposition to the patent application in question.  Accordingly, the second reason fails to establish that he was in possession of information, upon which a serious opposition could be mounted."

Decision
         The judgement in the Vangedal‑Nielsen case indicates that the applicant seeking an extension of time under S.59(1) has to make out a case justifying the extension.  The factors to be considered before an extension of time is granted include:

.that some good reason existed why the prospective opponent had been unable to mount its opposition within the initial period of three months,

.that a potentially serious opposition is foreshadowed,

.the public interest in ensuring that worthless patents are not granted because insufficient time has been allowed for lodging a notice of opposition,

.the public interest in ensuring that there are no unreasonable delays in proceedings.

Thus extensions of time under S.59(1) are not granted as a matter of course, contrary to the submission made on behalf of ENNOR.  Some of the arguments contained in the submission made on behalf of POLTROCK are also misdirected.  In my opinion the fact that a prospective opponent does not possess substantial evidence in support of its opposition at the time of its application for an extension of time does not demonstrate that a potentially serious opposition is not foreshadowed.  It seems to me in the light of the Vangedal‑Nielsen case, it is not necessary for me to consider that there is a substantial opposition foreshadowed but merely that a serious opposition is genuinely intended by the prospective opponent.
         The circumstances and grounds given in the application have two aspects, firstly, ENNOR is ascertaining whether any prior publication or use of the claimed invention occurred before the priority date.  The submission made on behalf of the prospective opponent states that ENNOR understands that apparatus embodying the invention of application No. 552035 was publicly displayed before the priority date.  However there is no evidence before me to explain the basis for this understanding, though it is apparent that ENNOR is involved with agricultural products because a patent application entitled "Agricultural Implement" has been lodged in his name.
The second aspect of the grounds given in the application for extension states that ENNOR is awaiting advice from the Commissioner of Patents in relation to S.158(2). The prospective opponent's submission discloses that the enquiry to the Patent Office was to establish whether any public display before the priority date was protected under S.158.
         According to the file of application No. 552035, Sandercock, Smith and Beadle, the attorney representing ENNOR, lodged a letter on 28 July, 1986 which identified the present application and which reads as follows:

"In relation to the abovementioned application, we request the Commissioner to inform us whether the applicant, Mr. Bruce Allan Poltrock, notified the Commissioner, prior to 5th May 1983, under the provisions of Section 158(2) of the Patents Act 1952, in relation to apparatus embodying the invention claimed or described in the said application."

The Office replied, in a letter dated 27 August, 1986, that according to the records available in the Office POLTROCK did not lodge a notice under S.158(2) before the priority date.
         In this situation ENNOR could have lodged a Notice of Opposition within the initial three month period however he would not have been sure if the publication and use of the invention was protected under S.158 until he received advice from the Patent Office.  This advice is contained in the letter to Sandercock, Smith and Beadle and this letter is dated outside the initial three month period.  Therefore an application for an extension of time was lodged on the last day of the three month period.  In my opinion the preceding events demonstrate that ENNOR has a good reason why he was not able to mount his opposition within the initial period of three months.
The letter concerning S.158 was lodged well within the initial three month period and I note that the submission made on behalf of POLTROCK admits that the potential opponent was seeking information from the Commissioner which might (or might not) result in founding a serious opposition to the present application. In my opinion it is also relevant that ENNOR decided to support his application for extension of time with a written submission after he was informed that a notice under S.158(2) was not lodged before the priority date. This written submission also asserts that whether a notice of opposition is actually lodged depends on the results of investigations presently being carried out by the prospective opponent. I conclude from these actions that the prospective opponent genuinely intends a serious opposition rather than proceedings of a frivolous nature.
         The allowance of an application for an extension of time would delay the granting of a patent on application No. 552035, however the extra time would allow the prospective opponent more time to obtain information upon which a decision to lodge a notice of opposition may be based.  The public interest would be best served, it seems to me, by giving ENNOR time to consider whether he can demonstrate that the claimed invention was prior published or used before the priority date rather than by allowing a patent to be granted which might be attacked later on these grounds.
         Therefore I am satisfied that the prospective opponent has made out a proper case justifying the extension and I allow ENNOR an extension of time until 22 November, 1986 in which to lodge notice of opposition.
Costs
         The written submissions made on behalf of both ENNOR and POLTROCK contained arguments in respect of costs.  However my decision relied on the circumstances and grounds given in the application for an extension which are supported by documents already on the file of application NO. 552035.  Therefore in these circumstances I award costs against POLTROCK.

(M. KENDALL)