Coflexip v Stolt Comex Seaway A/S

[1995] APO 58

official notice

decision of a DEPUTY commissioner of patents

Application        :    No. 654276 in the name of COFLEXIP.

Title:    Device and Process for Unrolling Flexible Tubular Conduits Essentially Vertically.

Action:    Opposition by STOLT COMEX SEAWAY A/S, and an application for an extension of time under Regulation 5.10 (2) to serve evidence in support.

Decision:    Issued             .

Abstract:    No proper case for the extension of time sought was made out.  In recognition that potential declarants were itinerant, an extension of one month was granted. The extension was limited to one month in the absence of any evidence of the real difficulties arising from itinerant declarants.

Time for serving evidence extended to 10 days past the date of the decision, to allow the opponent time to serve any evidence they have readily available.

patents act 1990

decision of a DEPUTY commissioner of patents

Re:Patent Application No. 654276 by COFLEXIP, opposition thereto by STOLT COMEX SEAWAY A/S, and an application for an extension of time under Regulation 5.10 (2) to serve evidence in support of opposition.

background

Patent application 654276 was advertised accepted on 3 Nov 1994. STOLT COMEX SEAWAY A/S filed a notice of opposition on 30 Jan 1995, and a statement of grounds and particulars was served on 1 May 1995. The statement identifies 8 patent specifications, and refers briefly to some common general knowledge.

On 28 July 1995 the opponent requested an extension of time for three months to serve its evidence in support. A substitute request was filed on 15 August, correcting certain dates - such that the request is for the three months ending 1 November 1995. The request provides the following as the grounds for the extension of time:

A number of people skilled in the relevant art have been contacted and preparation of evidence from the information gathered is underway. However more time is required for consideration and collation of the information; drafting of the evidence in declaratory form and serving of evidence on the opponent.

On 15 August the applicant objected to the extension of time. The matter was heard in Canberra on 26 September, both parties appearing by phone. The applicant was represented by G Noonan (patent attorney of Davies Collison Cave, Melbourne); the opponent was represented by A Thomas (patent attorney of Collison & Co, Adelaide).

Submissions

On the morning of the hearing, the opponent provided faxed submissions. The substance of those submissions are:

-the opponent is a Norwegian company, and there are delays in its communications with Australia;

-the relevant people skilled in the art of the present invention inevitably spend much of their time off-shore in the oil and gas industry, giving rise to peculiar difficulties in obtaining their time;

-there are difficulties associated with ensuring the good-will of potential declarants; and

-there are corresponding oppositions in Europe and North America.

It was also foreshadowed that an extension beyond the three months presently sought will be required.

The submissions of the opponent are essentially:

-the onus is on the person seeking the extension to justify it;

-the opponent has already had 9 months since acceptance was advertised;

-the fact that the opponent was Norwegian was irrelevant;

-the reasons put forward by the opponent were mere assertions incapable of being tested; and

-the only significant reference in the statement of grounds and particulars to common general knowledge was in para 3B - but very little information is there provided.

Decision

The requirements for granting an extension of time to serve evidence are set out in regulation 5.10. In particular, subregulation 5 requires:

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.

Significantly this makes clear that I must not grant an extension of time to serve evidence unless I am reasonably satisfied that it is appropriate in all the circumstances.

In considering whether or not the extension is justified, I am mindful of the comments of Burchett J in Ferocem Pty Limited v Commr of Patents (1994) AIPC 91-057:

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 all necessarily ranged on the same side. They include the expeditious disposal of matters in the Patents 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 Aluminum & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 143, "the public interest that a serious opposition by a person in fact entitled to oppose the grant of a patent should be dealt with on the merits, rather than it be shut out in consequence of a failure in procedure, lamentable though that failure may be".

In my view, the grounds set out in the request for an extension of time do not justify any extension whatsoever. The request sets out three matters:

-the opponent has contacted a number of people - but when they were contacted is not evident (indeed it could even have been the day before the request was filed);

-preparation of evidence from information gathered is underway - which is what would be expected in any case; and

-more time is required to consider, collate and draft the evidence.

Nothing set out in the request is supportive of the opponent moving with due expedition to completing its evidence. Indeed the request reduces to little more than 'We request an extension of time because we need more time'.

With respect to the submissions of the opponent at the hearing, I would observe:

-the fact that the opponent is Norwegian is of little relevance. With modern communications such as FAX, the Internet, etc., communications from the other side of the world are as immediate as communications from the other side of the Australian continent;

-the issue of good will of potential declarants is an issue in most (if not all) oppositions. The opponent has not shown any particular issues in this opposition where the issue of goodwill has necessarily protracted the gathering of evidence such that it could not be completed before the end of the initial three month period;

-the fact that the opponent is engaged in oppositions to corresponding applications in other countries is of interest but of little relevance (apart from supporting their seriousness in the opposition). I particularly observe that there is no basis to treat the Australian opposition as being in any way subordinate to oppositions conducted in other countries; and

-the opponent did not volunteer information on when the potential declarants had been contacted. But in response to a direct question from me on this matter the opponent advised that the Australian attorney was given the names of potential declarants on 18 May and 1 June. I was also advised that it had taken some time to convince the opponent of the need to have experts skilled in the art in Australia as distinct from elsewhere. If such is the case, it seems to me that the time taken to advise the Australian attorney of possible declarants may have involved delays of the opponent's own making and do not justify an extension.

That is, I do not consider that these matters provide justification for an extension of time.

However there is one matter raised by the opponent which is of significance. The invention relates to laying conduits from ships. The opponent asserts that the relevant people skilled in the art inevitably spend much time off-shore in the oil and gas industry - and this seems plausible. Further the opponent asserts that this results in peculiar difficulties in obtaining evidence from such people, as they spend considerable periods of time away on a boat. This also seems plausible, and prima facie I accept it. To this extent I come to the conclusion that some extension of time to serve evidence in support is justified.

However the opponent has provided me with no real information as to the extent of the problems arising from having to rely on itinerant declarants. For example, what is the frequency of their periods away?; how often are they available on land?; do the ships on which they are located have fax and/or phone capabilities? From the information available to me I can only speculate on the extent of the difficulties arising from having to rely on itinerant declarants - a situation which is incongruous with being reasonably satisfied that the extension of time is justified.

Consequently, in the absence of any information whatsoever on the extent of the difficulties arising from the opponent having to rely on itinerant declarants, I consider an extension of time of 1 month only to be reasonably justified.

The time for serving evidence as so extended expired on 1 September 1995. I note the comments of Burchett J in Ferocem (supra):

... Indeed, even where an application for a particular period, such as the two months sought here, is regarded as unjustified, it seems to me a decision maker, having a discretion of the kind conferred by Regulation 5.10, should always consider whether some short period ought to be allowed, so that an applicant who may have assumed some extension would be granted will not be shut out entirely from presenting evidence that may be immediately available.

It seems likely that the opponent may have some evidence immediately at hand, at least in respect of the issues of novelty. I think that I should not deny the opponent the opportunity to serve that evidence. For that purpose, and recognising that signatures might be required from itinerant persons to formally complete that evidence, I allow the opponent 10 days from the date of this decision to serve its evidence in support of the opposition.

Costs

In matters before the Commissioner, cost usually follow the event. In this case the opponent urged that it be awarded costs as the objection to the extension of time was frivolous. I disagree entirely, as I consider the reasons given in the request for an extension of time to have been manifestly inadequate. I award costs against the opponent, STOLT COMEX SEAWAY A/S.

Conclusion

The time for serving evidence in support of the opposition expires 10 days after the date of this decision.

D Herald
Deputy Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  Collison & Co, Adelaide