Caterpillar Inc v Kozo Miyake
[1996] APO 48
•16 October 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 651768 in the name of CATERPILLAR INC.
Title: Integrated Vehicle Positioning And Navigation System Apparatus And Method
Action: Opposition to the grant of a patent by KOZO MIYAKE and an extension of time to serve a copy of a notice of intention to serve evidence in reply and directions.
Decision: Issued .
Abstract: I cannot find any circumstances to justify Kozo Miyake not meeting the requirements of regulation 5.8(4). Consequently, I refuse to allow an extension of time to serve a notice of intention to serve evidence in reply, or to issue directions under regulation 5.10(1).
However, I allow five (5) days from the date of this decision to serve whatever evidence Kozo Miyake has immediately available.
The matter should be set down for hearing under section 59 as soon as possible.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 651768 by CATERPILLAR INC and an opposition thereto by KOZO MIYAKE and a request for an extension of time to serve a copy of a notice of intension to serve evidence in reply.
background
Australian patent application number 46042/93 was filed as a divisional application of 50832/90 (serial number 642628) on 2 September 1993 by Caterpillar Inc (Caterpillar).
The application was advertised accepted on 28 July 1994 and assigned the number 651768. Kozo Miyake (Kozo) filed a notice of opposition on 27 October 1994 and served a statement of grounds and particulars on 27 January 1995. This opposition is yet to be heard.
The evidence in support and evidence in answer stages have been completed. Evidence in reply or a notice of intention to file evidence in reply under regulation 5.8(4) was due on 14 April 1996.
On 15 April 1996, Caterpillar filed a request under section 104 to amend the complete specification.
On 6 June, Kozo requested that the Commissioner issue a direction under regulation 5.10(1)(b) that the time for serving evidence in reply be extended until a reasonable time after the request to amend the opposed specification has been determined.
On 11 June, the parties were advised that the Deputy Commissioner proposed to make a direction that the time for evidence in reply expire 1 month after the Commissioner notifies the parties of the allowance, refusal or withdrawal of the request for leave to amend filed on 15 April 1996. Comments or representations and advice as to whether the parties wished to be heard on the matter were requested within 10 days.
On 13 June, Kozo filed a request for an extension of time of 1 month from 14 June to 14 July 1996 to serve a notice of intension to serve evidence in reply in respect of this opposition. The circumstances in which, and the grounds upon which, this application is made are as follows:
The applicant’s evidence in answer presented a new set of claims. The applicant next made a request for leave to amend the specification. You have requested my comments by 23 June, 1996. Thereafter, no doubt you will decide whether to grant the request.
In order to facilitate evidence in reply, I need to know whether the request for leave to amend will be granted.
You have advised that you propose to make a direction that the time for serving evidence in reply will expire one month after the fate of the request for leave to amend is notified. You have invited comments from the parties. I need an extension to permit enough time for those comments to be lodged and any dispute resolved.
On 19 June, 1996 Caterpillar submitted that the proposal for a direction by the Deputy Commissioner made on 11 June was not in accordance with the regulations. Regulation 5.8(4) specifies that the opponent must, within one month of service of evidence in answer, serve either a copy of the evidence in reply or a copy of a notice of intention to serve evidence in reply. Further, the opponent’s case was unaffected by any request to file amendments during the one month period. The opponent did not serve evidence or a notice of intension to serve evidence within the month allowed and consequently the direction was inconsistent with the regulations.
On 12 July, a delegate of the Commissioner advised the parties that the Deputy Commissioner cannot give the proposed direction until the opponent requests and is granted an extension of time in regulation 5.8(4) up to the date of the proposed direction.
On 29 July, Caterpillar objected to the application for an extension of time.
On 15 August, Kozo requested the Commissioner exercise his discretion and extend the period in which to serve a copy of a notice of intention (the notice ) to file evidence in reply on the applicant to the date of the proposed direction. A Statutory Declaration setting out why the notice was not served within the prescribed period was also included with this request.
The matter was heard, both parties by telephone, in Canberra on 6 September 1996.
Caterpillar was represented by Mr Douglas Carter of Carter, Smith & Beadle, Melbourne and Kozo by Mr Michael Martin of Chrysiliou Moore Martin, Sydney.
The invention relates to systems for determining terrestrial position information (or global positioning system [GPS]), and to systems for navigating an autonomous vehicle.
SUBMISSIONS
Kozo
The extension of time is required due to an error or omission by the opponent’s attorney.
If not for the error or omission, the notice of intention would have been filed by 14 April 1996.
The applicant had an intention to file an application for leave to amend as at 14 March 1996.
The applicant’s action in filing the application was not determined or influenced by the opponent not filing the notice.
Presumably, the notice is now required by the legislation in order to give the applicant an early opportunity to seek a hearing of the substantive opposition. In this case, the notice or lack of it could not affect the course taken by the applicant who had shown its intention to amend.
If the extension is granted and the proposed direction of 11 June issued, this will only involve an additional delay of one month.
The applicant admits the original claim was bad, so had to amend and cause substantial delay itself.
The applicant had the claims, the subject of the application, available at 14 March 1996. It choose to delay filing them until 15 April 1996, more than one month. It cannot therefore complain that the one extra month extension is either unreasonable or undue.
The applicant’s own actions in filing the application will, at a minimum, cause a delay of 8 months in these matters.
New claims 1 and 7 do not correspond to any of the accepted claims. It is in the public interest that these claims be subject to comment by the opponent’s expert.
The Patent Office practice manual indicates that matters such as oppositions should be placed in “suspension” until amendments are finalised.
Kozo referred to Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136, and an unreported Patent office decision relating to further evidence on application number 624994 published on 13 December 1994 (Ashai v WR Grace & Co)
Caterpillar
On 14 March the applicant served evidence in answer on the opponent and foreshadowed that they would be filing a request to amend the specification and asked the opponent whether the proposed new claims, provided as an exhibit to the evidence, could provide a basis for settlement of the opposition. No response was ever received to that request.
The request to amend was filed as soon as possible after approval was received from the applicant on 11 April, and placed in the State Office late box on 15 April as 14 April was a Sunday. As evidence in reply or the notice of intention had not then been received it was assumed the opponent was not going to file evidence and that the opponent would rely on the opposition provisions to oppose the allowance of the amendments if they had grounds to do so.
The extension of time application has been made after the time prescribed by regulation 5.8(4)(a) which was one month from the date of service of the evidence in answer. Regulation 22.11 specifically excludes extensions of time under section 223 for opposition proceedings under Chapter 5 of the regulations except 5.3. This is not accidental as it was clearly in the minds of the legislators that the time prescribed for opposition matters could not be able to be extended if an error or omission by the person concerned or by his agent or attorney or even through circumstances beyond the control of these people resulted in the time being missed. Something further was required.
An extension under regulation 5.10(2) should not be granted if it is an extension to which the terms of section 223 would apply if it was not for regulation 22.11 (3)(a) which excludes Chapter 5 oppositions from section 223. Regulation 22.11(3)(a) must be read as limiting the Commissioner’s discretion.
The application for an extension of time is not as prescribed as it does not specify the section of the Act or the regulation under which the application is made or set out the grounds under which the extension is sought.
There is nothing in the extension application to establish any reason why the opponent failed to file evidence or the notice of intention within the due time. There has been no disclosure of the facts which give rise for the need for an extension. There has been no disclosure of any facts which led to the non lodgement of the notice or the evidence within the due time.
The applicant has not been provided with a copy of the opponent’s statutory declaration accompanying their extension application. As far as the applicant is concerned there has been no evidence filed as to why evidence or the notice of intention was not filed.
The first notification that the applicant had that the opponent had intended to serve evidence in reply was in a copy of a letter to the Patent Office dated 14 August 1996, and received the next day, stating that they had an intention to serve evidence in reply. Any extension of time should be from the 14 April to the date the notice of intention was actually served. There still remains a period of from 14 April to 14 June for which an extension application has not been made.
The onus is on the applicant for an extension of time to justify the extension and in this case as no reasons have been given or the reasons given in the application are inadequate, the applicant has not justified the extension.
The actions of Caterpillar relating to the amendments are totally irrelevant as to circumstances leading to the failure to lodge the notice of intension in the appropriate time.
If the extension of time is not allowed the opponent still has the right to apply for special leave to lodge further evidence.
Caterpillar referred to Kent-Moore Corp v. Environmental Products Amalgamated Pty Ltd 25 IPR 233, Kimberley-Clark Corp v. The Proctor & Gamble Co 26 IPR 581 and E.I. Du Pont de Nemours and Company v DowElanco 28 IPR 59
Both parties made submissions on costs.
DECISION
The Law
The requirements for granting an extension of time to serve evidence are set out in regulation 5.10. In particular, subregulation 5 provides:
The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a) if he or she proposes to grant an application by a party‑is reasonably satisfied that the other party has been notified of the application; and
(b) if he or she proposes to act on his or her own motion‑ensures that the parties are notified of the proposed action; and
(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.
From this, I note that before I can grant an extension of time I must be reasonably satisfied that the extension of time is appropriate in all the circumstances.
In the present case the timing provision for which the extension is required is subregulation 5.8(4) which provides:
(4) If an opponent intends to rely on evidence in reply to the evidence referred to in paragraph (2) (a) or (3) (a), the opponent must:
(a)within 1 month of being served with a copy of the evidence under paragraph (2) (a) or (3) (a), serve on the applicant a copy of:
(i) a copy of the evidence in reply; and
(ii)if the opponent does not serve on the applicant a copy of the evidence in reply ¾ a copy of a notice of intention to serve evidence in reply; and
(b)if the opponent serves on the applicant a copy of a notice of intention to serve evidence in reply ¾ serve on the applicant a copy of that evidence within 3 months of being served with a copy of the evidence under paragraph (2) (a) or (3) (a); and
(c)file the evidence in reply and any notice of intention as soon as practicable after the copy of the evidence in reply or notice has been served on the applicant.
In determining what factors must be considered I am guided by the decision of the Federal Court in Ferocem Pty. Ltd. v. Commissioner of Patents, (1994) AIPC 91-057. In this decision Burchett J. said:
"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 Patent Office, and questions of cost, of efficiency, and of insistence upon proper 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 The Reynolds Metal Company (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." This proposition was cited, by Bowen CJ in Vangedal-Nielsen [33 ALR 144] (at 150), where he also set out some of the considerations involved upon the application for an extension of time."
From this judgement the considerations relevant to an extension of time can be thus stated generally as follows:
a)The Commissioner, before allowing an extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension; and
b)The Commissioner must consider not only the private interests of applicants for patents and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unduly protracted.
Justification of the extension
At the hearing on 6 September I gave Caterpillar 10 days to comment on the Statutory Declaration, by Mr Michael Martin of Chyrsiliou Moore Martin, they said they had not seen. Caterpillar’s submissions related mainly to the evidence of what lead to overlooking the need for a notice of intention.
The circumstances I am considering here are the circumstances which led to the failure to serve a notice of intention to serve evidence in reply. In order to issue directions relating to the proposed amendments, filed by the applicant on 15 April 1996, I must be satisfied that an extension of time to serve the notice is appropriate in all the circumstances;
The parties have presented me with submissions and evidence about:
errors or omission and the relevance of section 223 of the Act.
the desire to delay service of evidence in reply until the amendments are finalised;
the applicant’s request to amend the specification filed on the last day for service of evidence in reply or the notice of intension to serve evidence in reply;
the suspension of oppositions until amendments are finalised;
the application for the extension of time and the reasons given for the extension in the application;
events that occurred after the prescribed time under regulation 5.8(4) has expired.
In considering these submissions and the evidence I note the following points:
the purpose of evidence in reply is to reply to the evidence in answer;
the submissions about delaying service of evidence in reply until the amendments have been finalised are not relevant to the consideration of the circumstances surrounding the failure to serve the notice in question.
a request for further evidence if appropriate in the present circumstances, that is where the further evidence must be in relation to changes brought about by amendments made within the requirements of section 102 of the Act, can be made under regulation 5.10(4);
events that occurred after 14 April or 15 April, as 14 April is a Sunday, are largely irrelevant to the justification of an extension of time. This includes circumstances surrounding the proposed amendments;
the justification of the extension of time must be based on events occurring before 15 April that would have precluded the opponent from meeting the requirements of the regulations.
Kozo’s submissions and Mr Martin’s declaration relate to either the proposed amendments or to events after 15 April 1996, although the evidence shows that Kozo did intend to serve evidence in reply. In his declaration Mr Martin makes only passing reference to having “overlooked the need for the Opponent to file a Notice of Intention to file Evidence in Reply”. At the hearing I asked him if there were any reasons why he had overlooked the need to file the notice. He said that he “forgot” to file the notice and did not have any reminder system in place at the time to ensure matters were not overlooked.
I cannot find any circumstances to justify Kozo not meeting the requirements of regulation 5.8(4).
Consequently, I refuse to allow an extension of time to serve a notice of intention to serve evidence in reply or issue a direction under regulation 5.10(1).
In Ferocem (supra), Burchett J said that in cases where the extension of time was clearly not justified, a decision maker should consider allowing a short extension of time to allow the applicant for the extension, who might have expected the extension to be allowed, to serve whatever evidence is immediately available.
In the letter provided as Annexure MAEM1 to Mr Martin’s declaration, I note that the Japanese patent attorneys for Kozo have requested that draft evidence in reply and their expert’s opinion be provided for consideration by 5 June 1996.
Therefore as there appears to be evidence immediately available I will allow Kozo a short extension to serve this evidence.
CONCLUSION
I refuse to allow an extension of time to serve a notice of intention to serve evidence in reply or issue directions. However, I allow Kozo five (5) days from the date of this decision to serve whatever evidence they have immediately available.
COSTS
In accordance with the event I award costs against Kozo.
Bob Sawyer
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Carter, Smith & Beadle, Melbourne
Patent attorneys for the opponent : Chrysiliou Moore Martin, Sydney
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