Coal Corporation of Victoria v David William Hinkley and Brian Alan Nugent

[1993] APO 56

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 621944 in the name of Coal Corporation of Victoria

Title:    Brown Coal Based Fertilizer Composition

Action:    Opposition by David William Hinkley and Brian Alan Nugent.

Decision:    Issued            . 

The opponents served a statement of Grounds and particulars, but did not serve any evidence; they sought to rely on the references given in the statement as being sufficient to incorporate those references as evidence.

Opposition found unsubstantiated as (i) there was no evidence served, and (ii) on a consideration of the grounds identified in the statement, the opposition could not succeed in the absence of relevant evidence.

Although the opposition failed, the delegate of the Commissioner was not prepared to direct the application be sealed before the documents identified in the Statement of Grounds and Particulars had been considered in a bar-to-sealing action.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 621944 by Coal Corporation of Victoria, and opposition thereto by David William Hinkley and Brian Alan Nugent.

background

Application 621944 was filed on 17 October 1988 as provisional application no. PJ0977. That application was completed on 16 October 1989 (under application no. 42932/89).

On 29 November 1990, Mr Hinkley filed a notice under section 57 of the Patents Act 1952, setting out alleged grounds of invalidity of the application. That notice included a number of exhibits, including declarations attesting to alleged prior use of certain matters. Following examination, the application was advertised accepted on 26 March 1992.

On 9 March 1992, Mr. Hinkley wrote to the Commissioner, observing that the Patent Attorney for the present applicant was previously engaged by a different company dealing with an invention in the same field as the present. He asked:

"... I wish to know whether the Patents Act determines this situation existing between two clients and the same Patent Attorney to be in the region of a "conflict of interest" action.."

following which he was advised:

"... there is no action for 'conflict of interest' per se under the Patents Act. However the application was accepted on 26 March 1992, and you should seek urgent professional advice from a patent attorney as to whether you have grounds for opposing the grant of the application. Any such opposition would have to be filed by 26 June 1992."

He was also advised of the "Ethics and Disputes" Committee of the Institute of Patent Attorneys of Australia.

On 26 June 1992, the opponents David William Hinkley and Brian Alan Nugent jointly filed a notice of opposition. On 20 July 1992, the opponents served their Statement of Grounds and Particulars on the applicant.

On 9 November 1992, the attorney for the applicant advised the Commissioner that they had not been served with any evidence in support by the due date (October 20), nor received any notification of any application for an extension of time.

On 12 November the Commissioner was advised by Mr Hinkley that:

"... Mr. B A Nugent and myself have decided that the "Statement of Grounds and Particulars" will stand as evidence. We hasten to add that should a personal appearance be required before an arbitrator, original documents listed in the "Statement of Grounds and Particulars" will be tabled."

On 3 December 1992, the parties were notified by the Commissioner that:

"Since no evidence has been forthcoming it is assumed that service was not effected by the due date and the provisions of Regulation 5.8(3) apply."

On 10 February, the attorney for the applicant advised the Commissioner:

"... confirm our previous advice that no Evidence in Support in this matter was served on us or our client by the due date...

... as the Opponent has not adduced any evidence in support of the opposition, the Applicant does not intend to serve any Evidence in Answer to the opposition."

Thereafter, and after some disputation between the parties regarding the date and location of the hearing, the matter was set for hearing in Melbourne on 11 August 1993. The applicant was represented by Mr J Slattery (patent attorney of Davies Collison Cave, Melbourne); the opponents represented themselves.

Submissions

At the hearing the submissions related essentially to the non-existence of any evidence in the opposition. On the one hand, Mr Slattery submitted that there was no evidence in the opposition; the statement of grounds and particulars does not constitute evidence; and that the opponent was restricted to arguing the matters raised in the statement without recourse to whatever documents were referred to in the statement. On the other hand, Mssrs Hinkley and Nugent submitted (in effect) that by the Statement of Grounds and Particulars they had put forward the evidence in the opposition. Mr Hinkley also sought to rely upon the material that had previously been filed with the section 57 notice.

On several occasions during the hearing Mr Nugent made certain threats against myself. I have disregarded those threats in coming to my decision in this matter.

Mssrs Hinkley and Nugent left the hearing before its conclusion.

Decision

The Evidence

In determining an inter parte opposition, the Commissioner hears the parties, and decides the opposition on the basis of the evidence (that is, the evidence served as between the parties) and the arguments/submissions regarding the interpretation or significance of that evidence. Furthermore, regulation 5.8(1) states:

"... if an opponent intends to rely on evidence in support of the opposition, the opponent must ... serve on the applicant a copy of any evidence in support of the opposition ..."

so that clearly the only evidentiary material that an opponent can rely upon is that which has been served (subject of course to further evidence under regulation 5.10(4)).

In the present case, the opponents have filed a statement of grounds and particulars which identifies a number of documents, but has not served any evidence in the opposition. There is thus prima facie no evidence on which the opponents can rely.

The opponents presented a number of arguments associated with this issue:

Firstly, it was in effect argued that the Commissioner had ready access to the patent specifications identified in the statement, and that therefore I should consider those documents.

Secondly, it was argued that certain documents had previously been served, and should be considered. My understanding is that the documents to which Mr Hinkley was referring were the documents filed under section 57 of the Patents Act 1952. This being so, I observe that even though the material had previously been filed with the Commissioner, it was filed in a different action; it was not served in the opposition in accordance with Regulation 5.8. Thus this material does not form evidence that the opponent can rely upon.

Thirdly, the opponents presented a number of arguments such as the morality of the situation, the effects on major contracts with which they were associated, favouritism and incompetence within the Patent Office, conflict of interest by the applicant's attorney, and the undesirability of letting the other side know their case before the hearing. On these matters, whilst the opponents are entitled to hold their beliefs on such issues, none of these submissions assists me in the determination of this matter.

None of these arguments change the fact that no evidence has been served in the opposition.

The Statement of Grounds and Particulars

The opponents left the hearing before any consideration was given to the material in the statement of grounds and particulars (as it stands by itself), and so did not make any submissions based on that document. On consideration of the statement, I note as follows:

1. There are 11 "Grounds" of opposition.

a.Grounds 1, 4, 6, 7, 8, 9, and 10 allege that various claims are "common knowledge";

b.Grounds 2, 3, and 5 apparently allege that the invention has been previously published, and refers to a number of patent specifications.

c.Ground 11 alleges breach of confidentiality by the applicant.

1. The statement of particulars has 10 parts [i to x]

a.parts i, ii, and vii refer to various patent specifications;

b.Part iii, iv, v, and vi refer to alleged activities (including sales) by various people; and

c.parts vi, vii, viii, ix, and x refer to the material filed under section 57 of the Patents Act 1952.

Of the matters raised in the Statement of Grounds and Particulars, I note that they all relate to anticipation - that is, none of the matters can be sustained in the absence of appropriate evidence. As the opponents have failed to serve any evidence in support of their opposition, it follows that I have no basis for finding (in the opposition) that the invention claimed is anticipated. Consequently the opponents have failed to establish their opposition.

Public Interest Considerations

In this matter, I am particularly conscious that the opposition has failed because of a 'technicality' - viz the failure of the opponents to serve any evidence in relation to the alleged anticipation - without a consideration of the merits of the documents identified in the statement.

In proceedings before the Commissioner, the Commissioner has a role to protect the public interest. Desirably, such public interest considerations should normally be dealt with in the course of the opposition proceedings.

Where an opponent does not provide any evidence to support documents identified in the statement, there may be good cause for the Commissioner to consider those documents in the public interest. But for the Commissioner to consider such documents as part of the evidence in the opposition, he would have to act under regulation 5.11, providing both parties with copies of the relevant documents. If the Commissioner was to so act in an inter parte opposition, he would be taking on part of the role of the opponent. However taking on that role is inconsistent with the primary role of the Commissioner as an arbiter in oppositions, and should only occur when the circumstances dictate that it is clearly necessary to protect the public interest.

In the present case, the opponents have identified in the Statement of Grounds and Particulars a significant number of documents relating to the invention. The opponents did not serve copies of these documents as evidence, and the Commissioner did not act under regulation 5.11 to bring those documents in as evidence in the opposition. Thus I have not considered these documents.

However, noting that the opponents are apparently very active in the field of the invention, and because I have not considered any of the documents because of the 'technicality' that copies were not served in evidence, I consider that I cannot direct the application to proceed to sealing before the Commissioner has considered those documents in the public interest, in a bar-to-sealing action.

Costs

The applicant requested an award of costs in the matter. The opponents, having left before the conclusion of proceedings, made no submission of costs.

The normal practice of the Commissioner is that costs follow the event. The opponents have failed in their opposition, and I see no basis in the reasons for which the opposition failed to vary the normal practice for the award of costs. I therefore award costs, as per Schedule 8, against the opponents.

Conclusion

I have found that the opposition has failed, principally because the opponents failed to serve any evidence in the opposition.

However I am not prepared to direct the application be sealed until so much of the documentary material identified in the statement of grounds and particulars that the Commissioner can readily obtain, has been considered in the context of a bar-to-sealing action. If the Commissioner considers there is a bar to sealing a patent on the application, and subject to any appeal against this decision, the applicant will be notified in the normal manner for the bar-to-sealing procedure.

(D Herald)
Assistant Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  The opponents represented themselves