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Colgate-Palmolive Company v Cussons Pty Ltd

Colgate-Palmolive Company v Cussons Pty Ltd

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Case Copied 5 June 1991 8 min read

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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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1991] APO 20
Decision Date: 5 June 1991

CaseChat Overview and Summary

Colgate-Palmolive Company filed an application for a patent on a particulate detergent composition in a bottle, which was subsequently opposed by Cussons Pty Ltd. The dispute reached a point where Cussons applied for an extension of time to serve evidence in support of its opposition. The applicant objected to the extension, arguing that the evidence should be lodged by a specific date to expedite the proceedings. The case was heard by a delegate of the Commissioner of Patents, who had to determine whether the extension was justified under the circumstances.

The legal issues before the court were whether Cussons had a valid reason for the extension and if the length of the extension was reasonable. Cussons argued that the extension was necessary because it was preparing evidence related to a concurrent litigation in the Federal Court, which involved the same patent and parties. The applicant contended that the evidence in the Federal Court was not entirely relevant to the opposition and that a shorter extension would suffice.

The court found that the opponent had a valid reason for seeking the extension, as the evidence being prepared for the Federal Court litigation was likely relevant to the opposition. The court also noted that the opposition proceedings should not be unreasonably protracted, and the public interest in ensuring that invalid patents are not granted was best served by allowing the relevant evidence to be filed in the opposition. Therefore, the court granted the extension of six months, concluding that the extension was justified given the circumstances.

The final orders of the court were that Cussons Pty Ltd was granted the extension of time sought, with the deadline for serving its evidence in support extended to 16 August 1991. The court also awarded costs against the applicant, Colgate-Palmolive Company.

Orders