Buxton Micrarium Limited v Optech International Limited

[1993] APO 44

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 601623 in the name of BUXTON
  MICRARIUM LIMITED.

Title             :    Microscope Viewing Arrangement.

Action:        Opposition by OPTECH INTERNATIONAL

LIMITED under Sec 59 of the Patents Act

1952 and an application to adduce

further evidence under regulation 59 by

the applicant.

Decision:        Issued           .  Application for

special leave to adduce further

evidence allowed.  

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 601623 by BUXTON MICRARIUM LIMITED,

opposition thereto by OPTECH INTERNATIONAL LIMITED  under

section 59 of the Patents Act 1952 and an application for

special leave to adduce further evidence under regulation

59 of the Patents Act 1952 by the applicant.

background

Patent application No. 601623 by BUXTON MICRARIUM LIMITED (hereinafter referred to as Buxton) was advertised accepted on 13 September 1990. On 13 December 1990 OPTECH INTERNATIONAL LIMITED (hereinafter referred to as Optech) lodged a notice of opposition to the application under section 59(1) of the Patents Act 1952.

As the patent application was both lodged and accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and regulation 23.3, are applicable and therefore the matters in hand are in substance determined in accordance with the relevant provisions of the Patents Act 1952 and the regulations thereto.

Evidence-in-Support was lodged by Optech after extensions of time on 13 March 1992 and Evidence-in-Answer was served by Buxton on Optech on 12 June 1992.  Evidence-in-Reply was served on Buxton, after an extension of time, on 10 November 1992.

On 25 November 1992 Buxton sought leave of the Commissioner under regulation 59(1)(a) of the Patents Act 1952 to adduce further evidence and in a letter to the Commissioner dated 3 February 1993, and lodged the following day, Buxton advised that Optech had informed it (Buxton) of its (Optech's) refusal to agree to the adducement of further evidence.

On 4 February 1993 Buxton made application for special leave under regulation 59(1)(b) of the Patents Act 1952 to adduce further evidence and on 17 February 1993 Optech gave notice of its intention to oppose the grant of the application for special leave. Consequently, the matter was set down for hearing on 19 April 1993.

Prior to the hearing both parties advised that they would not attend.  Buxton provided written submissions and while Optech indicated that written submissions would not be provided concerning the merits of Buxton's application for special leave, it nevertheless made submissions regarding future action in the event that the application for special leave is allowed.

APPLICATION FOR SPECIAL LEAVE

In his declaration on behalf of Buxton, Mr. John Christiansen declared:

"  1.  I am a registered patent attorney, consulting to Carter
      Smith & Beadle, patent attorneys for Buxton Micrarium
      Ltd., the applicant for patent in Australia under
      serial NO. 601623.

2.  On 4 February 1993 an application for special leave to
      adduce further evidence, under regulation 59(1) under
the Patents Act 1952 (as operating under the Patents
      Act 1990) was lodged at the Patent Office.

3.  This declaration is made under the provisions of
regulation 59(3) under the Patents Act 1952 (as operating
under the Patents Act 1990).

4.  The nature of the further evidence is a statutory
      declaration made on 3 December 1992 by Janet Carter.

5.  On 10 November 1992, the residue of the opponent's
      Evidence-in-Reply was served on the applicant.  That
      residue for the first time included a statutory
      declaration by Lannes Johnson, a major party to matters
      discussed in the opposition to application serial No.
      601623.  This followed the service on 14 September 1992
      of a statutory declaration by Kerry Spackman, the other
      individual most concerned on the opponent's side with
      matters around which the opposition revolves.

Accordingly, Mrs. Carter the widow of the inventor,
      whose evidence formed part of the applicant's Evidence- 
      in-Answer, in that evidence could not react to evidence
      by Spackman and Johnson, as the opponent's Evidence-in- 
      Support contained no evidence from those parties.

It is considered essential that Mrs. Carter be able to
      place in evidence a response to the evidence of Spackman
      and Johnson.

The opponent was asked on 25 November 1992 to agree to
      the adducement of such further evidence.  The
      Commissioner was advised of that fact in a letter of even
      date.  On 4 February 1993, the applicant was advised that
      the opponent would not agree to the adducement.

6.  The substance of paragraph 4 and 5 of this declaration
      were included in the application for special leave."

In his letter dated 16 April, Mr. Keith Leslie, Patent Attorney,
of Davies Collison Cave in addition to advising that Optech did not wish to make written submissions on the application for special leave stated:

"In the event that the application for special leave is
    allowed, the opponent reserves its right to file
    reply evidence under the provisions of regulation 60.
    Further in that event, the opponent consents to accepting
    that the applicant's further evidence has been served
    provided the procedure in item 5.5 of the old Hearings
    Manual is followed, and provided the applicant confirms that
    the copy declaration sent us under cover of the  February 4,
    1993 letter from the applicant's attorneys is a copy of the
    evidence in respect of which the special leave application
    is allowed."

DECISION

The law in relation to applications for special leave to adduce
further evidence with respect to the factors which the Commissioner needs to consider is conveniently set out in Sue & Anor v Carpenter (1991) AIPC 90-750 and these factors are expressed in the following terms:

(1)Is the evidence which is proposed to adduce, based on the nature thereof and the grounds as set out in the declaration, relevant to the action, in the sense that it would contribute to a more correct, just, or expeditious result?

(2)If the application for special leave was allowed, would this cause unnecessary protraction of the opposition?

(3)Would there be any injustice done to the other party, if the application were to be allowed?

(4)Has the party seeking to adduce the further evidence been diligent in prosecuting the opposition action.

Dealing with these factors in turn:

Factor (1).

In his declaration, dated 16 April 1993, Mr. Christiansen makes the point that the Evidence-in-Reply contained for the first time declarations by Kerry Spackman and Lannes Johnson, both of
whom are central characters in the opposition.

I agree that this is prima facie the case and, on consideration of this ground in relation to the nature of the evidence which is proposed to adduce, i.e. establishing what happened in the period 1985/1986 between the late Dr. Carter, Mr Spackman and Dr Johnson, I am of the opinion that this evidence essentially addresses the Spackman and Johnson declarations and is thus relevant to the action.  As a consequence, it is evidence that should be taken into account if a more correct and just result is to issue.

Factor (2).

The evidence which is proposed to adduce is already in the hands of Optech and thus, providing that Optech, should it wish to do so, serves on Buxton the declaration on which it proposes to rely in reply to the further evidence within the month allowed by regulation 60(2) of the Patents Act 1952, there will be no unnecessary protraction of the opposition.

Factor (3).

If I allow the application to adduce the further evidence, Optech has the right, under the provisions of regulation 60(2) of the Patents Act 1952, to serve on Buxton a declaration in reply to the further evidence. Each party to the action will then have had the opportunity of having their say and in this regard there will be no injustice done to the other party.

Factor (4).

Evidence-in-Support was lodged by Optech after extensions of time on 13 March 1992 and Evidence-in-Answer was served by Buxton on Optech on 12 June 1992.

Evidence-in-Reply was served on 10 November 1992 and almost immediately, on 25 November 1992 in fact, Buxton sought leave to adduce further evidence.  Similarly, on the same day as being advised of Optech's refusal to agree to the adducement of further evidence, i.e. 4 February 1993, Buxton made application for special leave to adduce the further evidence. 

It is clear from the alacrity of Buxton's responses to Optech's Evidence-in-Support and Evidence-in-Reply that the party seeking to adduce the further evidence (Buxton) has been diligent in prosecuting the opposition action.

Having regard to the conclusions I have arrived at with respect to the four factors, in my opinion Buxton has made out a case to justify the allowance of the application for special leave to adduce further evidence and accordingly I allow the regulation 59 application.

The provisions of regulation 60 of the Patents Act 1952 are now applicable. The further evidence has already been filed at the Patent Office and I remind Buxton of Optech consenting to accepting that the further evidence has been served providing Buxton confirms that the copy declaration sent to Optech under cover of Buxton's attorneys letter dated 4 February 1993 is a copy of the evidence in respect of which the special leave application is allowed. In the circumstanes, the time for Optech to file any Evidence-in-Reply will run from the date Optech receives the confirming notification, as detailed,
from Buxton.

COSTS

Neither party attended the hearing scheduled to hear the matter of the application for special leave to adduce the further evidence.  In this instance I cannot see any reason why costs should not follow the event and I therefore award costs (if any are applicable) against the opponent, Optech International Limited.

J.M.Sellars

Delegate of the Commissioner of Patents

Patent Attorneys for the applicant:         Carter Smith & Beadle,

Melbourne.

Patent attorneys for the opponent:     Davies Collison Cave,

Melbourne