CHARLES SIMS
[1998] APO 38
•20 July 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 66124/90 in the name of Charles SIMS
Title: Apparatus for Multi-Sized Filter Element Cartridges
Action: Application under section 223(2)(a) for an extension of time to enter the national phase.
Decision: Issued .
Abstract
Because of the death of the applicant’s US attorney, the applicant was not in a position to appreciate fully the circumstances that lead to the failure to enter the national phase. The death also contributed to the delay in filing a declaration supporting the extension application. However, the applicant was considered to have contributed significantly to this delay and to have not shown due diligence. Given that a period of almost six years passed before the supporting declaration was filed, the public interest weighs heavily against other considerations.
Application for extension of time under section 223 refused.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 66124/90 by Charles SIMS and an application under section 223(2)(a) for an extension of time to enter national phase.
background
Patent application 66124/90 was filed under the PCT on 15 October 1990 and given international application number PCT/US90/05907. The priority date claimed is 16 October 1989. Australia was not an elected state under Article 31 of the PCT and hence the final date for entering the national phase in this country was 16 July 1991.
The applicant filed the requirements for national phase entry on 15 August 1991 and subsequently on 31 October 1991 also filed an application for extension of time under section 223. The section 223 application stated that the circumstances and grounds upon which the application is made “Will be set out in a declaration to be lodged shortly.” A period of 17 months then passed until 1 March 1993 when a representative of the Patent Office wrote to the applicant’s attorneys reminding them that a statutory declaration had not yet been filed.
There was no response to this correspondence and a further period of more than 4 years followed until 26 August 1997 when a statutory declaration by Mr Sims was filed. The Patent Office then indicated to the applicant that in light of the extensive delay in providing the declaration further evidence was required and a time limit of 29 November 1997 was set. The applicant’s attorneys in a letter of 27 November 1997 sought and were granted an extension of this period to 28 February 1998. A further declaration was filed on this date however a delegate of the Commissioner indicated in a letter of 30 March 1998 that he was not satisfied that sufficient information had been provided to justify the extension sought.
The matter was set for hearing on 1 July 1998 in Canberra. Mr S Wilson, patent attorney of Griffith Hack & Co, Melbourne, appeared for the applicant.
The section 223 Application
Mr Sims in his declarations indicates that at all times it was his intention that the application in Australia should enter the National Phase within prescribed time limits and should have been diligently prosecuted. The remainder of his evidence I summarise as follows:
Mr Sims’s patent applications including the present one were originally handled by his US patent attorney Mr Alex Norcross.
Mr Norcross arranged filing of the present application through Griffith Hack & Co (Griffith Hack) but Mr Sims has been told that Griffith Hack on receipt of the instructions informed Mr Norcross that the deadline for National Phase entry had expired. Griffith Hack further indicated that this appeared to be because preliminary examination had not been requested on the international application. Mr Sims is told also that Griffith Hack informed Mr Norcross that if preliminary examination had not been requested then it would be necessary to obtain a “special extension of time” on the basis of error or omission.
Mr Sims has been told that Mr Norcross informed Griffith Hack that preliminary examination had not been requested and they were instructed to take whatever action was required to preserve the priority of the case.
Mr Sims assumed the problem had been solved because Mr Norcross did not tell him otherwise.
Mr Norcross passed away in 1994. Responsibility for the application passed to Mr Sims’s new US attorney who informed Griffith Hack in March 1995 of the change. Griffith Hack informed the attorney that the application stands as lapsed, the application was subject to a request for extension of time and that a declaration was required before that request could proceed.
The US attorney had to go through Mr Norcross’s files and inform clients of his death and the status of their files. After the attorney took over, Mr Sims’s files were “somewhat in disarray” and correspondence from his new US attorney concerning this application was not acted on promptly.
Mr Sims believes that because of the death of Mr Norcross it is difficult to give the full circumstances as to why the action was not taken. He says it appears that the major cause may have been the failure to request international preliminary examination or that the deadline for national phase entry had been diarised on the assumption that preliminary examination had been requested.
decision
The provisions of section 223 relevant to the present request are as follows:
"223. (1) ...
(2) Where, because of:
(a)an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
(3) The time allowed for doing a relevant act may be extended, whether before or after that time has expired.
(4) Where an application is made for an extension of time for more than 3 months, the Commissioner must advertise the application in the Official Journal.
...”
The circumstances in the present case are that once it was discovered that the application had missed the date for national phase entry the applicant moved quickly to comply with the requirements for the national phase and to request an extension of time. However the first statutory declaration forming part of that request was filed almost six years later and as indicated in Paragraph 26.5.3 of the Australian Patent Office Manual of Practice and Procedure (Volume 3):
“Situations may arise where it is not possible for the applicant to file the declaration with the application form. In such cases the declaration should be filed as soon as practicable thereafter. Delay in filing the declaration is a factor the Commissioner needs to consider when exercising discretion on the application. In fact, given the provisions of reg 22.11(1), strictly speaking the application is not made until such time as the declaration is filed.”
Regulation 22.11(1) states that:
“For the purposes of subsection 223 (2) of the Act (“extensions of time”), an application for an extension of time must be in the approved form and have with it a declaration setting out the grounds on which the application is made.”
Therefore, any inordinate delay in filing the declaration is one of a number of relevant factors to consider when exercising my discretion under section 223. Another relevant factor, although not a overriding factor, is whether the applicant has placed before the Commissioner the circumstances said to justify the extension. In my view the applicant has not provided sufficient information surrounding the failure to enter the national phase. The death of Mr Norcross has put Mr Sims in a difficult position but I do not think that fact can be used to excuse entirely the state of the evidence and the delay in providing it.
Mr Sims says that a failure to request preliminary examination, or proceeding on the basis that it had been requested, appears to have been the “major cause”. I assume he is referring to an error or omission by his late attorney. However the reasons for this assumption are not at all clear. Mr Sims may not be in a position to know what Mr Norcross did or didn’t do but I would at least expect him to know or to be able to ascertain whether Mr Norcross had instructions to request preliminary examination or that it was his usual practice to do so in relation to Mr Sims’s applications or those of his other clients. As it stands the possibility of an error in not requesting preliminary examination appears to have been first suggested, after the event, by Mr Sims’s Australian attorneys and there is nothing substantial to indicate that this, as opposed to any number of other possible reasons, was behind the failure to enter the national phase in time.
Mr Wilson argued that if I found the evidence lacking in this regard I was obliged to allow the applicant time to file further evidence. This he said was because the letters received from the Patent Office had indicated that the evidence was deficient in explaining the long delay in filing the evidence rather than the underlying reasons for the failure to enter the national phase. I think this suggestion overlooks the clear onus on the applicant to provide information supporting the section 223 application. However, any inclination I may have had to favour the applicant on this point is negated by the long delay in providing evidence.
Mr Norcross’s death is certainly a contributing factor but I do not think it unreasonable to expect Mr Sims to have shown at least some interest in the progress of his Australian application in the approximately three years before Mr Norcross’s death, particularly when he was aware of the initial problem. The statement that he “assumed the problem had been solved, since Mr Norcross did not tell me otherwise” is hardly credible but if true would suggest that Mr Sims had an unusually casual approach to the management of his patent portfolio. In any event what is more significant is the delay between the advice in 1995 that the request for extension of time was not yet supported by a declaration and the filing of the first declaration in August 1997. Mr Sims says of this period only that his “files were somewhat in disarray and correspondence from our new US attorney concerning this application was not acted upon promptly” and suggests that this is also a consequence of Mr Norcross’s death. I should have thought that knowing the matter had gone unresolved for almost four years Mr Sims would have exhibited some urgency but again appears to have acted without the level of diligence that is consistent with his supposed intention to actively pursue the application.
The public interest is usually served by certainty in the status of a patent or patent application. For example in Sanyo Electric Co Ltd v Commissioner of Patents (1996) AIPC 91- 283:
“Rather the approach which should be taken is that it is undesirable in the public interest that the register should remain unrectified and in cases such as the instant one, where an applicant is seeking an extension of time to correct the register, the public interest would not be met if the applicant by its actions caused further or unnecessary delay in undertaking the required steps to have that rectification carried out at the earliest possible date.”
I believe Mr Sims has contributed significantly to further delay in resolving the status of the patent application and, taking account of all the circumstances, I believe the weight of the public interest is against other considerations and consequently I am not inclined to grant the extension of time sought.
conclusion
The death of the applicant’s US attorney is a significant factor both in the applicant’s inability to explain the cause of the error or omission and in the delay in providing evidence. However it cannot justify all of the very long delay in pursuing the application for extension of time and the applicant’s contribution to extending that delay.
I refuse the request for an extension of time under section 223.
Philip Spann
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Griffith Hack & Co, Melbourne
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