Colgate-Palmolive Company v Cussons Pty Ltd

[1991] APO 20

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Patent Application number 600430 by COLGATE-PALMOLIVE COMPANY, opposition thereto by CUSSONS PTY. LTD., and an Application for an Extension of Time to Serve Evidence-in-Support of the Opposition.

BACKGROUND

Application 600430 was lodged on 7 May 1985 as a further application based on application no. 542136 (82698/82), using the provisions of section 51 of the 1952 Patent Act. Application no. 542136 was itself a further application, being based on application no. 28632/77 which was filed on 8 September 1977.

The Patent Office advertised acceptance of application no. 600430 on 16 August 1990. CUSSONS PTY LTD lodged a notice of opposition on 16 November 1990.

On 15 February 1991 the opponent lodged part evidence in support, being certified copy of documents filed before the Federal Court in regard to litigation concerning patent no. 542136. The opponent also filed a request under regulation 55 of the regulations made under the Patents Act 1952 for an extension of time of 6 months (up to 16 August 1991) in which to serve additional evidence in support of the opposition.

The applicant objected to the extension sought, and the matter was set down for a hearing. On the day before the hearing, Cussons filed a further application for extension of time to file evidence in support. This application requests an extension for an indeterminate period, being a period expiring 3 months after the revocation proceedings in respect of patent no. 542136 is complete. This further application for an extension of time has not been considered as part of this decision.

This matter was heard after the commencement of the Patents Act 1990; the provisions of section 234(3) of that Act, and of regulation 23.3, apply to this matter.

Mr. Peter Marsh of F.B. Rice & Co. appeared for the applicant, and Mr. Glen Gordon of Arthur S. Cave & Co. appeared for the opponent.

Application

The reasons for the extension of time given in the present application for extension of time are as follows:

"Preparation of Evidence in Support of the opposition is proceeding. Partial Evidence in Support has previously been served on the Applicant, but further time is required in order to prepare and additional evidence. The Opponent and the Applicant are presently engaged in litigation before the Federal Court (Proceedings No. G594 of 1989) in respect of Australian Patent 542136 (82698/82) which is the parent of the present divisional application 600430, having the same priority dates, the same inventors, and describing essentially the same invention as that described in application 600430. The infringement and revocation proceeding in respect of Patent 542136 (between the same parties as in the present Opposition proceedings) is set down to be heard in the Federal Court beginning on 29 April 1991, for 3 weeks. As it is anticipated that the same Evidence being prepared in connection with the Federal Court proceedings will be relevant and is likely to be used as further Evidence in Support of our Opposition, additional time is required to prepare and serve this evidence, and any further evidence that may be required; the extension being for six months due to the timing of the Federal Court hearing.

Submissions and decision

The applicant's written submission accompanying their objection to the extension (lodged on 18 March 1991) is as follows:

The opponent has pointed out their similarity between the invention of the present application and that the subject of patent no. 542136 presently the subject of litigation before the Federal Court. In that litigation the Federal Court has required the defendant Cussons Pty Ltd to lodge its evidence by 28 March 1991. In view of the fact that a substantial amount of evidence used in the court proceedings has been lodged by the opponent and of the fact that the Opponent as defendant is required to lodge all its evidence before the Federal Court by the date stated we can see no basis for extending the time for lodging the balance of the Evidence-in-Support of the Opposition beyond 28 March 1991 or shortly thereafter for example to 8 April 1991.

At the hearing, the first submission made by the attorney for Cussons was a contention that in considering an application for an extension of time, it was only proper to investigate the past conduct of the person seeking the extension; future conduct was not relevant. He further contended that if it was decided (on the basis of past conduct) that it was appropriate to grant an extension, the length of the extension was a matter to be negotiated between the person seeking the extension and the Commissioner; the other party should have no say in the length of the extension granted. Finally, he contended that as Colgate-Palmolive had indicated there preparedness to agree to some extension (albeit not the full extension sought), that they had acceded to the propriety of an extension being granted, and that the only issue remaining was for the opponent and the Commissioner to negotiate an appropriate length of extension.

I do not accept this submission. Under the provisions of regulation 22.22 (and indeed under the provisions of regulation 85 of the 1952  Act) the Commissioner must, before exercising a discretionary power under the Act or Regulations adversely to a person, give that person an opportunity to be heard. Under the provisions of regulation 83A (1952 Act), the Commissioner must not grant an extension of time unless he is satisfied that the extension is justified, having regard to all the circumstances. It is well established that in considering an extension of time to serve evidence that relevant circumstances include, inter alia, the private interests of applicants - which include having the application proceed to grant in a timely manner [see for example, Genentech Inc. v. The Wellcome Foundation Ltd., (1988) AIPC 90-493]. It follows therefore that the applicant has a right to be heard in respect of, inter alia, the length of the extension sought by the opponent.

Having rejected this submission, it remains for me to decide whether, on the criteria for extensions of time that follow from the decisions of Vangedal-Neilson v. Commissioner of Patents and Gelphen Nominees (1980) 33 ALR 144 and Lyons v Registrar of Trade Marks 1 APR 416, the opponent has made out its case for the extension sought.

The basis of the opponent's position in applying for the extension of time, as presented at the hearing, is fairly stated in the statement of reasons given with the request for the extension of time.

At the hearing the attorney for the applicant made the following submissions:

(i)the applicant conceded that the opponent was serious in its opposition,

(ii) the applicant has no objection at this time if the opponent was to put in the affidavits that are before the court,

(iii) that the patent, when granted, would not have very long to run (the term would expire in Sept. 1993),

(iv) that a lot of the evidence that is before the Federal Court will not be relevant to the present case because of the difference in the claims,

(v)in the interest of expedient settlement, an extension of time should be granted that is simply sufficient to enable the affidavits already in existence to be lodged - for example to May 16, and

(vi) the applicant objected to the extension being for a period of 6 months ending on 16 August 1991.

From the applicant's submissions, I conclude that the applicant has conceded that much of the material that has been lodged before the Federal Court is relevant to the present opposition. Having regard to this and the applicant's other concessions, the only issue that must be decided in the present case is whether, having regard to all the circumstances, the length of the extension sought is justified.

The opponent has based its justification for the extension sought on the fact that the hearing of the Federal Court action on patent no. 542136 was set to commence on 29 April 1991. They assert that the evidence being prepared in connection with the court proceedings is anticipated to be relevant and is likely to be used as further evidence in support of the opposition. They also state that additional time is required to prepare and serve this evidence, and any further evidence that may be required. Finally they state that the extension for six months is due to the timing of the Federal Court hearing.

In my view the opponent's submission has merit. I note that the claims of the present application (although very similar) are prima facie different to those of the patent 542136; it would be reasonable to expect the opponent to review the evidence used in the Federal Court hearing in the context of the present opposition. I consider that a period of 3 months after filing that evidence with the Federal Court is not an unreasonable period in the present circumstances.

In the present case I must also consider the public interest, by ensuring that invalid patents are not granted, and that the proceedings are not unreasonably protracted. I am not persuaded that the relatively short period remaining to the end of the maximum term of the patent (if a patent is granted on the present application) is relevant to the present proceedings; the brevity of that period arises through the application being a divisional application rather than through any protraction in the opposition proceedings. I am also of the view that the public interest in the present opposition is best served by permitting relevant evidence filed in the Federal Court action to be filed in the present opposition; in this regard I also note that at the hearing there was concurrence between the parties that evidence had been filed before the Court after the commencement of the Federal Court hearing. I therefore conclude that the opponent's request for an extension to 16 August (which is approximately 3 months after the date of the Federal Court hearing), is justified.

I therefore allow Cussons Pty. Ltd the extension of time sought, and thus the time for service of its evidence in support is extended to 16 August 1991.

Costs

At the hearing, Mr. Gordon submitted that 'the opponent should be awarded costs because this application for extension of time was the first such application'; Mr. Marsh for the applicant submitted that 'in the totality of the action the costs that would be available in respect of this hearing would be negligible in relation to the litigation going between the parties'.

In my view, neither submission is relevant to the award of costs. The opponent set out in their request for an extension of time the reasons for the extension sought. I have decided that the extension sought was justified in all the circumstances. I award costs in this action against the applicant.

(D. Herald)
  Acting Assistant Commissioner of Patents

OFFICIAL NOTICES

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application        :    No. 600430 by COLGATE-PALMOLIVE COMPANY

Title:    Particulate detergent composition in a bottle.

Action:    Objection to Extension of time to lodge evidence-in-support of the opposition. Divisional application; parent application presently before the Federal court on an action between the parties for infringement and revocation.

Decision:    Issued              ;extension of 6 months granted.