Bundaberg Foundry Pty. Ltd. v the Track Shop Pty. Ltd
[2004] APO 6
•30 March 2004
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Patent Application : No. 753802 in the name of The Track Shop Pty. Ltd.
Title: Abrasion Resistant Surface Coatings and Method of Forming Same
Action: An application under Regulation 5.10(2) for an extension of time to serve Evidence in Support of opposition by Bundaberg Foundry Engineers Pty. Ltd.
Decision: Issued 30 March 2004
Abstract
Bundaberg Foundry Engineers Pty. Ltd.'s application for a 1 month extension of time would extend the period for it to file Evidence in Support of its opposition to The Track Shop Pty. Ltd.'s patent application from the initial 3 months provided in the legislation to 10 months in total.
Given the lengthy extended period, the patent applicant’s interests and the public interest of expeditious and efficient completion of matters before the Patent Office are substantive considerations in determining Bundaberg Foundry Engineers Pty. Ltd.'s application.
Nevertheless, on balance and having taken account of all relevant circumstances, at this stage the opponent’s interests and the public interest in having the opposition considered on its merits hold sway and accordingly, the extension of time to 24 February 2004 for Bundaberg Foundry Engineers Pty. Ltd. to serve Evidence in Support is appropriate and hence, is allowed.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 753802 in the name of The Track Shop Pty. Ltd. and application under Regulation 5.10(2) for an extension of time to serve Evidence in Support of opposition by Bundaberg Foundry Engineers Pty. Ltd.
BACKGROUND
Patent Application 58482/98 was filed in the name of The Track Shop Pty. Ltd. (TTS) on 10 February 1998 as PCT application PCT/AU98/00074, published as WO98/34729, claiming priority from Australian provisional patent applications PO5047 and PO6499. The application was advertised accepted in the Official Journal as Patent Application 753802 on 31 October 2002.
Notice of opposition to the grant of a patent on the application was filed by Bundaberg Foundry Engineers Pty. Ltd. (BFEL) on 29 January 2003, with the Statement of Grounds and Particulars in support being filed on 24 April 2003. On 22 July 2003, BFEL applied for an extension of time from 24 July 2003 to 24 October 2003 to file Evidence in Support of their opposition. TTS filed a submission in respect of BFEL’s application for an extension of time but did not object to the extension. An extension of time was granted to 24 October 2003. On 24 October 2003, BFEL applied for a second extension of time from 24 October 2003 to 24 January 2004 to file Evidence in Support of their opposition. TTS again filed a submission in respect of BFEL’s application but did not object to the second extension of time. A second extension of time was granted to 24 January 2004. On 23 January 2004, BFEL applied for a third extension of time from 24 January 2004 to 24 February 2004 to file Evidence in Support of their opposition. On 3 February 2003, TTS objected to the third extension of time and the matter was set for hearing in Canberra on 19 February 2004.
Patent Application 58482/98 is one of multiple patents/applications for similar subject matter and related by division. The related patents and patent applications are expired petty patents 707580 (23806/99) and 736834 (72085/00) and standard complete patent application 72161/00. BFEL was one of the parties which filed Notice under s.28 in respect of petty patent 707580. On 16 May 2000, BFEL also filed Notice under s.27 in respect of the instant patent application 58482/98.
Mr Ian de Jonge of Cullen & Co, Patent & Trade Mark Attorneys, represented the opponent, BFEL, and provided written submissions. Mr. Bill Anderson of Ahearn Fox, Patent and Trade Mark Attorneys, represented the patent applicant, TTS, and appeared at the hearing by telephone.
APPLICATION FOR EXTENSION OF TIME
BFEL’s first application requested an extension of time to serve Evidence in Support of their opposition under Regulation 5.10(2) and gave the circumstances and grounds as follows:
“A serious opposition is foreshadowed against Australian Patent Application No. 753802.
The patent application proceeded to acceptance with claims, which were different in scope to the claims of the corresponding petty patent. The opponent is in the process of identifying and obtaining declarations from a number of people skilled in the art of applying wear resistant coatings to sugar mill rolls and other devices. The opponent considers that the “art” lies in various different fields of endeavour including the sugar crushing industry, but also the agricultural industry and industries applying hard facing in general, and especially tungsten carbide hard facing. Some of the people skilled in the art, were used by the opponent when opposing the extension of the corresponding petty patent, however these people now need to prepare different declarations due to the quite different scope of the patent claims of the accepted patent application. The opponent is based in Bundaberg, Queensland and some of the people skilled in the art are based in far North Queensland and elsewhere. Further time is required to enable the people to be identified and contacted by the opponent to enable evidence to be completed and prepared.”
BFEL’s second application requested a second extension of time to serve Evidence in Support of their opposition under Regulation 5.10(2) and gave the circumstances and grounds as follows:
“A serious opposition is foreshadowed against Australian Patent Application No. 753802.
The patent application proceeded to acceptance with claims, which were different in scope to the claims of the corresponding petty patent. The opponent has now identified a number of qualified declarants and is in the process of obtaining declarations from a number of people skilled in the art of applying wear resistant coatings to sugar mill rolls and other devices. The opponent considers that the “art” lies in various different fields of endeavour including the sugar crushing industry, but also the agricultural industry and industries applying hard facing in general, and especially tungsten carbide hard facing. Some of the people skilled in the art used by the opponent when opposing the extension of the corresponding petty patent, however these people are either not contactable due to changes in employment or now need to prepare different declarations due to the quite different scope of the patent claims of the accepted patent application. The opponent is based in Bundaberg, Queensland and some of the people skilled in the art are based in far North Queensland and elsewhere. As stated, the Opponent has identified a number of suitable declarants and the declarants are in the process of formulation and preparation of their respective declarations. Given that the opponent is reliant on a number of declarants which are independent from the Opponent and thus have other priorities, further time is required to enable the declarations to be completed and prepared.” (my bolding)
BFEL’s third application requests a third extension of time to serve Evidence in Support of their opposition under Regulation 5.10(2) and gives the circumstances and grounds as follows:
“A serious opposition is foreshadowed against Australian Patent Application No. 753802.
As with the previous application for an extension of time, the opponent regards the importance of establishing the common general knowledge of a person skilled in the art of applying wear resistant coatings as being of great importance to the opposition proceedings. The opponent has previously identified a number of qualified declarants and is still in the process of preparing declarations from a number of people skilled in the art of applying wear resistant coatings to sugar mill rolls and other devices. The opponent considers that the “art” lies in various different fields of endeavour including the sugar crushing industry, but also the agricultural industry and industries applying hard facing in general, and especially tungsten carbide hard facing. Some of the people skilled in the art used by the opponent when opposing the extension of the corresponding petty patent, however these people are either not contactable due to changes in employment or now need to prepare different declarations due to the quite different scope of the patent claims of the accepted patent application. The opponent is based in Bundaberg, Queensland and some of the people skilled in the art are based in far North Queensland and elsewhere. As stated, the Opponent has identified a number of suitable declarants and the declarants are still in the process of preparing their respective declarations. The opponent advises that further time is required to enable the declarations to be completed and prepared.” (my bolding)
GROUNDS OF OPPOSITION
BFEL's grounds of opposition are that
the invention is not a manner of manufacture
the invention is not a patentable invention within s.18(1) of the Patents Act as it does not meet the threshold requirement of "an invention"
the invention is not novel
the invention does not involve an inventive step
the invention does not comply with s.40(2) and (3)
the nominated person is not entitled a patent for the invention
with particulars having been provided in respect of each ground of opposition.
RELEVANT LAW
The relevant provisions under the Patents Act 1990 for extending the time in which to serve Evidence in Support are subregulations 5.10(2) and 5.10(5) as follows:
(2)The Commissioner may extend the time within which the party may take a step prescribed in this Chapter (not being a step that is taken under regulation 5.3 or 5.3AA, paragraph 5.4(a) or subparagraph 5.8(1)(a)(i)):
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies; and
(c) after the party has served a copy of the application on the other party.
(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a) …
(b) …
(c) in either case:
(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
10. As stated by Goldberg J in National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33 (2 February 2001),
"19 The principles applicable to the power to extend time pursuant to reg 5.10(2) have been given detailed consideration in Ferocem Pty Ltd v Commissioner of Patents (supra) and A Goninan & Co Ltd v Commissioner of Patents (supra). In Ferocem Pty Ltd v Commissioner of Patents (supra) Burchett J said at 208:
"Regulation 5.10 lays down a perfectly general requirement - that the Commissioner be `reasonably satisfied that ... an extension of time ... is appropriate in all the circumstances'.
The idea that such a broad discretion can validly be reduced by a decision-maker to an insistence upon `imperative' compliance with particular requirements has repeatedly been rejected by the courts."
Burchett J was rejecting the approach to reg 5.10(2), taken by the delegate of the Commissioner of Patents in an application for an extension of time to file evidence in an opposition proceeding, that there had to be a proper explanation of the facts and circumstances surrounding the delay in filing the evidence, and without such a proper explanation a case had not been made out justifying an extension of time.
20 Burchett J continued at 209:
"The determination of an application for an extension of time under reg 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of costs, of efficiency, and of insistence upon the professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136 at 143, `the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be.""
(Ferocem Pty Ltd v Commissioner of Patents (1994) 49 FCR 205, A Goninan & Co Ltd v Commissioner of Patents (1997) 75 FCR 200)
DISCUSSION
11. I will initially consider whether a serious opposition is foreshadowed. It is relevant to this consideration that
BFEL was one of the parties which filed Notice under s.28 in respect of related petty patent 707580.
BFEL also filed Notice under s.27 in respect of the instant patent application 58482/98.
BFEL's grounds of opposition are extensive and have been particularised in detail, including 49 particularised documents in support of the ground that the invention is not novel and statements as to the state of common general knowledge at the priority date of the invention.
12. It is manifestly clear from BFEL's past and current behaviour that it has, prima facie, foreshadowed a serious opposition.
13. TTS has submitted in its objection that "it is manifest that the opponent has not marshalled its endeavours to provide the evidence in support of the opposition in reasonable time" and hence, the "opponent by its actions now can be seen to have little regard to the seriousness of their opposition".
14. I refer to Re: Neville William Lyons (carrying on business as Mitty's Authorised Newsagency) v The Registrar of Trade Marks (1983) 78 FLR 217, where Beaumont J. said
" Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time."
15. While the matter before Beaumont J. was the delegate's decision in respect of an application for extension of time for the opponent to file Evidence in Support of their opposition to registration of a trade mark, the consideration referred to in the preceding paragraph is directly relevant to the instant consideration. Evidence, in the form of statutory declarations from appropriately skilled practitioners in the relevant industry(s), to establish the state of the common general knowledge, years prior at the priority date of the accepted patent claims, is also notorious for taking considerable time.
16. It follows that the mere delay in finalising Evidence in Support is not determinative of a serious opposition by BFEL not being foreshadowed. Consequently, I consider that BFEL has foreshadowed a serious opposition, which is in both BFEL's interests and the public interest that it be dealt with on its merits. As Kitto J stated in Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136 at 143
"the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be."
17. I will now consider the relevance of the reasons put forward by BFEL in support of its application for an extension of time.
18. In support of its application, BFEL "regards the importance of establishing the common general knowledge of a person skilled in the art of applying wear resistant coatings as being of great importance to the opposition proceedings". This is consistent with BFEL's Statement of Grounds and Particulars and with the reasons put forward by BFEL in support of its applications for the first and second extensions of time.
19. BFEL's Grounds of Opposition include the invention not being novel and not involving an inventive step and particularises these grounds with statements about the interpretation of particularised documents by a person skilled in the art and about the common general knowledge prior to the priority date of the invention, respectively. BFEL’s applications for the first and second extensions of time generally refer to obtaining declarations from a "number of people skilled in the art", with BFEL’s application for the third extension more specifically referring to declarations to establish the common general knowledge of persons skilled in the art. Consequently, I conclude that the application for the third extension of time is directly and consistently related to filed and particularised grounds of opposition and to BFEL’s previous applications for extensions of time.
20. While it is well known that the gathering of evidence from third parties in patent opposition matters usually takes considerable time, BFEL's instant application for an extension of time would extend the period for it to file Evidence in Support of its opposition from the initial 3 months provided in the legislation to 10 months in total. Such a lengthy period is of serious concern, both to the patent applicant's interests and to the public interest of expeditious and efficient completion of matters before the Patent Office.
21. BFEL's applications for extensions of time assert that BFEL has diligently pursued its Evidence in Support and has continued to make progress throughout the currently allowed 9 month period. However, in the context of the lengthy period of the extension, BFEL's actions may not be wholly consistent with these assertions. I consider it reasonable for the patent applicant and the public to expect that BFEL go to considerable efforts to ensure that its other business decisions unrelated to the instant matter before the Patent Office, such as its acquisition of Walkers Ltd., do not unduly delay the instant matter.
22. BFEL has also submitted that further time is necessary to complete the Evidence in Support, despite it having submitted evidence in respect of the corresponding petty patent, because the respective inventions are differently defined.
23. In support of TTS' submission, previously referred to, that "it is manifest that the opponent has not marshalled its endeavours to provide the evidence in support of the opposition in reasonable time" and hence, the "opponent by its actions now can be seen to have little regard to the seriousness of their opposition", TTS has also submitted
"Moreover, the opponent should have expected that the claims of the present application would be different from those of the corresponding petty patent. ……….. The opponent should have expected that the people skilled in the art which were used by the opponent when filing notification concerning the extension of term of the corresponding petty patent would need to prepare different declarations in the present opposition due to the quite different scope of the patent claims as accepted.",
"In our view, the existence or otherwise of a corresponding petty patent should have no bearing on the kind of evidence which should be adduced in support of the grounds of opposition", and
“An assertion by the opponent that more time is required for such persons to prepare declarations due to the quite different scope of the patent claims of the accepted patent applications the subject of the present proceedings, we submit, should be dismissed by the Commissioner. The claims of all patents should be of different scope, and the fact that this particular case shares a common priority with petty patent No. 707580 should have no bearing on the time taken for declarants to provide evidence in support.”.
24. In the submissions at the Hearing, TTS also submitted
"The present application, the two petty patents and the divisional application all cover the same subject matter and the specifications are practically the same except for the claims, the main difference between the claims of the various consanguineous patents and patent applications being in respect of the scope of protection granted or sought for the same invention, as the case may be. The first claim of the present application differs from the first claim of the first petty patent only insofar as the words “weld supporting therein tungsten carbide particles" in the first petty patent are replaced by the words “composite weld supporting therein wear resistant material in grit-like form.”” and
“The opponent has asserted that because of the difference in scope of the claims of the first petty patent and the present application, more time is required for “proposed” declarants to provide their declaratory evidence in respect of the present opposition. The applicant does not accept this assertion and submits that since the subject matter is common to all of the consanguineous patents and applications, and the opponent (and “proposed” declarants) have already had an opportunity to familiarise themselves with the art taught by the patentee when preparing submissions for the section 28 matter, the opponent should have required less time than that which would normally be required for the preparations of declarations.”
25. In short, TTS submitted that BFEL should have expected to be opposing different claims than those of the petty patent, and hence should have anticipated the need to obtain different declarations to those obtained for the section 28 matter, and that obtaining those declarations should take less time because the subject matter is common between the instant patent application and the petty patent.
26. On this point, I firstly note that TTS’ submissions do not accurately reflect BFEL’s applications, assertions and submissions. I understand BFEL to be simply stating that
further time was needed to identify and obtain declarations from a number of people skilled in the art of applying wear resistant coatings to sugar mill rolls and other devices, where the art lies in the various different fields of endeavour identified
"some" of those people were declarants in the section 28 matter but new declarations that pertain to the instant claims were necessary.
27. While the scope of the instant claims is different to that of the petty patent claims, the subject matter of the respective sets of claims are very similar. Consequently, I accept TTS' submission that preparation of declarations should take less time than usual - but only in respect of declarations being prepared by the declarants who were also declarants for the section 28 matter. It was wholly open to BFEL to exercise its right of seeking declarants beyond those used for the section 28 matter.
28. On a related point, I note that the decision to file multiple, and related, patent applications in respect of similar subject matter was solely that of TTS. Given that BLEF had sufficient commercial interest in petty patent 707580 to oppose the extension of its term, it was to be expected that BLEF would also oppose grant of the instant patent application. It is also entirely reasonable that BLEF does not ameliorate its rights in opposing the instant patent application simply because it has previously opposed a different patent. Consequently, having not fully succeeded in its opposition to petty patent 707580, it is both understandable and entitled that BLEF would wish to gather further evidence, from what TTS has described as “prospective declarants”, to strengthen its opposition to the instant application. Not only is BLEF’s behaviour in this regard countenanced by the Patents Act 1990, it is the expected common and business sense that flows directly from TTS’ deliberate strategy of multiple patent applications with claims of different scope for similar subject matter.
29. BFEL’s circumstances and grounds provided in support of its applications for extensions of time assert a steady progression in generating its Evidence in Support from the first application through the third application. In the ‘Application for Extension of Time’ Section of my decision, I have bolded the changes from the application for the first extension of time through to the application for the third extension of time to highlight the asserted progression. While it would be strongly preferable to have BFEL’s assertions confirmed by evidence in the form of statutory declarations or otherwise, such evidence is not an imperative requirement of subregulation 5.10(2). National Starch & Chemical Company v Commissioner of Patents (supra), Ferocem Pty Ltd v Commissioner of Patents (supra) and A Goninan & Co Ltd v Commissioner of Patents (supra). It is also the case that BFEL has supported its application for the third (and previous) extensions of time with more detailed reasons than those accepted by Beaumont J. in Re: Neville William Lyons (carrying on business as Mitty's Authorised Newsagency) v The Registrar of Trade Marks (supra). In respect of
"The grounds for the request were:
"Evidence in support of the opposition is in course of preparation but it is desired to have additional time to prepare that evidence and to serve copy thereof on the applicant." "
Beaumont J. determined
"Although a more detailed explanation of the position may have been desirable, I think that it is possible to construe the rather bald statement of the ground for the request (supra), as indicating that, although efforts had been made in that behalf, it was not possible to finalise the form of the evidence sought to be adduced in the time allowed by the regulation. I accept that, on one view, it is possible to read the stated ground as being little more than an assertion that more time is required. However, the statement of the ground does at least attempt some explication of the position. Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time. Given that background and given the construction of the statement of the ground which was open, I am of the opinion that the delegate did not exercise his discretion in any improper way. In particular, in my view, there was evidence before the delegate upon which he could rely in order to justify the grant of an extension. It follows that no case for review under the Administrative Decisions (Judicial Review) Act, 1977 has been made out on this branch of the case."
30. Consequently, I consider that the reasons put forward by BLEF do adequately support its application for the extension of time.
31. In my discussion so far, I have taken account of most of the submissions put forward by BFEL, the applicant for the extension of time. BFEL has also submitted that it is very much in the public interest to ensure that an invalid patent is not granted because, if “the patent application proceeds to grant, there is a possibility that the patentee will disrupt the crushing season and particularly will disrupt the ability of a sugar mill to properly and lawfully extend the life of its rollers using techniques that would be obvious in the light of the common general knowledge.”
32. In reading BFEL's statement, I consider it wholly understandable that “the applicant (TTS) is fearful that the opponent is already enjoying the benefits of the invention”. I note that BFEL’s submission strongly suggests that, if a patent is lawfully granted to TTS on the instant application 753802, the crushing season will be equally disrupted by the unlawful infringement of TTS’ patent by BFEL. These submissions are therefore relevant to both the patent applicant’s and the opponent’s interests. In deciding the instant matter, it is not appropriate to preempt an outcome of the opposition matter should it proceed to final determination. It is sufficient and relevant to note that, if a patent grant on 753802 lawfully eventuates, the patentee has right to relief under the Patents Act 1990.
33. BFEL has also submitted that in “respect of the private interest of the (patent) applicant, it is noted that the applicant has a granted petty patent and therefore already enjoys a measure of patent protection’. TTS has submitted that the “protraction of proceedings inherent in the patent system have already seen the two petty patents granted, extended and expire without affording the patentee any measure of enjoyment of patent protection.” Given that TTS has admitted that it has received the legislated benefit of the patent system in the form of two petty patents for related subject matter to the instant application, as distinct from commercial benefit that is dependent on a myriad of other factors, I fail to see the relevance of TTS’ submission to the instant matter. As mentioned in the preceding paragraph, TTS also has the right to relief under the Patents Act 1990 should a patent grant on 753802 lawfully eventuate.
34. I believe that I have now considered and addressed all significant submissions put forward by BFEL. In doing so, I believe that I have also considered and addressed all significant submissions on the facts of the case put forward by TTS. TTS' submissions also quite understandably include reference to various precedent that strongly supports its objection to BFEL's application for a third extension of time, particularly in the circumstances that the extension, if allowed, would provide BFEL with a period of 10 months in which to serve Evidence in Support when the initial period allowed for in the legislation is 3 months. I simply note that the law that is applicable to BFEL's application are subregulations 5.10(2) and (5), with that law being as explained in National Starch & Chemical Company v Commissioner of Patents (supra), Ferocem Pty Ltd v Commissioner of Patents (supra) and A Goninan & Co Ltd v Commissioner of Patents (supra) to which I have referred throughout my discussion.
DECISION
35. Given the lengthy extended period, beyond the initial statutory period allowed for serving Evidence in Support, the patent applicant’s interests and the public interest of expeditious and efficient completion of matters before the Patent Office are substantive considerations in determining BFEL’s application. Nevertheless, on balance and having taken account of all relevant circumstances, I have decided that, at this stage, the opponent’s interests and the public interest in having the opposition considered on its merits hold sway, it being appropriate that the extension of time to 24 February 2004 for BFEL to serve Evidence in Support be allowed. Accordingly, I allow the extension of time to 24 February 2004. However, I note that evidence, in the form of statutory declarations or otherwise, as to BFEL's diligence in pursuing its Evidence in Support, including continued progress towards finalising its Evidence in Support, would have allowed a clearer balance to be drawn between the respective interests of the opponent, the patent applicant and the public.
COSTS
36. The power to award costs is based on section 210 and regulation 22.8. The normal practice is that costs should follow the event. In the present matter, I have determined that the extension of time was allowable in accordance with the determined law on the considerations known at the time of the application and hence, I see no reason to depart from the normal practice of costs. Consequently, I award costs to BFEL.
Bill Major
Delegate of the Commissioner of Patents
30 March 2004
Patent attorneys for the patent applicant : Ahearn Fox, Brisbane
Patent attorneys for the opponent : Cullen & Co, Brisbane
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