Commonwealth Industrial Gases Limited v Liquid Air Australia Limited

[1983] APO 2

In the Matter of the Patents Act 1952

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In the Matter of Application No. 522,981 by COMMONWEALTH INDUSTRIAL GASES LIMITED for Letters Patent

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In the Matter of an Application under Section 160(2) for Extension of Time in which to Lodge Notice of Opposition by LIQUID AIR AUSTRALIA LIMITED

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In the Matter of an Opposition thereto by COMMONWEALTH INDUSTRIAL GASES LIMITED.

DECISION OF THE COMMISSIONER OF PATENTS:
This matter concerns an application by Liquid Air Australia Limited (hereinafter referred to as Liquid Air) made under sub‑section 160(2) of the Patents Act 1952 for an extension of time within which to lodge a notice of opposition to patent application No. 522,981 in the name of Commonwealth Industrial Gases Limited (hereinafter referred to as CIG).
         The subject patent application was advertised accepted in the Official Journal on 8 July, 1982.   A notice of opposition was therefore required under the terms of sub‑section 59(1) to be lodged by 8 October, 1982.   Liquid Air relied on the ground of an error or omission on the part of its agent or attorney and I have therefore treated the application as being made under paragraph 160(2)(a).  

Statutory declarations were provided by Michael John Grant, a patent attorney of the firm of Phillips, Ormonde & Fitzpatrick, Melbourne, and Neil Richard West, a technical assistant employed by the same firm.   The gist of the statutory declarations is that Mr. Grant instructed Mr. West to maintain a watch, based on the contents of the Official Journal of Patents, on all patent activities of CIG.  This instruction was given in a note dated 30 June, 1981 from Mr. Grant to Mr. West in these terms:

"Please maintain a watch on the Journal (including the abridgement and abstract supplements) for any patent, design and trade mark activities of Commonwealth Industrial Gases.   Please photocopy any new applic‑

ations, assignments, abstracts laid open to public inspection or abridgements of accepted applications for patents, trade marks and designs.   These photocopies should be given to me as soon as they are made.

Please keep a check on the Journals which have been checked so that none are missed."

Mr. West in his declaration states that he "had not been conducting this particular watch in accordance with the instructions originally given to [him]" by Mr. Grant.   He further states:

"I had recorded notifications concerning specific CIG applications which had been previously identified, but I had failed to watch for CIG applications which had not been previously identified.   I believe that I correctly understood the instructions ... when originally received, but I subsequently failed to fully comply with those instructions and proceeded to conduct the watch on the misunderstanding that I was only to report on newly filed CIG applications and other CIG applications which had been specifically identified by number."

On 9 November, 1982, Liquid Air wrote to Phillips, Ormonde & Fitzpatrick stating that it had not received any advice concerning three patent applications by CIG, including the subject application, despite the fact that the patent attorneys had been maintaining a general watch on CIG patent activities for more than a year.   Liquid Air further stated that it was disturbed that "the period in which opposition may have been lodged expired some weeks before the applications were brought to our attention".   A notice of opposition and application for extension of time were subsequently lodged on 16 November, 1982.
         I consider that Mr. West made an error or omission, or both, in failing to identify the subject patent application when the notification of its acceptance by the Commissioner was published in the Official Journal.   In particular, he had failed to search the abstract or abridgement supplements to the Journal as he had quite clearly been instructed by Mr. Grant.
          CIG was not represented at a hearing before me attended by Liquid Air's patent attorneys, but letters addressed to me dated 15 December, 1982 and 4 January, 1983 by CIG's patent attorneys asserted that Liquid Air was opposing a number of patent applications made by CIG on grounds of an "indiscriminate nature".   There is, it was said, "an overwhelming probability that the oppositions are not being entered into on their merits but because of a commercial policy adopted by [Liquid Air]".   The attorneys submitted that in the absence "of a showing of any reasonable and existing grounds for opposition it would be proper and in the public interest for the Commissioner to decline to extend the time for the lodgement of what is apparently a frivolous and vexatious opposition".  
         The attorneys for CIG also drew my attention to the decision of the Federal Court in Vangedal‑Nielson v. Commissioner of Patents (1980) 33 ALR 144; (1981) 51 AOJP 298 in which Bowen C.J. held that the Commissioner ought to have in mind, in deciding whether an extension of time should be granted under section 59 for the lodging of a notice of opposition, whether a serious opposition is foreshadowed.
         The Vangedal‑Nielsen case concerned an application for an extension of time made under the express terms of section 59 itself.   The extension sought here, even though it is in relation to the time specified in section 59, is sought not pursuant to section 59 but rather to section 160.
         The requirement of sub‑section 59(1) is that a notice of opposition be lodged "at any time within 3 months after the date of the advertisement of the acceptance of an application ... or within such further period, not exceeding 3 months, as the Commissioner, on an application made to him within the first‑
mentioned period, allows".
         Paragraph 160(2)(a) enables the Commissioner to extend the time for doing an act or taking a step in relation to a patent application or in proceedings under the Act required to be done or taken within a certain time where it has not been so done or taken "by reason of ... an error or omission on the part of the person concerned or of his agent or attorney".   In my view this is capable of applying so as to extend the time for lodging a notice of opposition under sub‑section 59(1).
         No grounds are laid down in sub‑section 59(1) for the granting of an extension under the terms of that sub‑section itself.   This is to be contrasted with paragraph 160(2)(a) where the grounds on which an extension may be granted are expressly stated.   In my opinion I do not have as broad a discretion to decide whether to grant an extension under section 160, once the specified grounds are made out, as I would have in deciding whether to grant an extension pursuant to section 59 itself.  
         The Vangedal‑Nielsen case appears to have the consequence that an intending opponent must establish, when seeking an extension of time under sub‑section 59(1) itself, that a serious opposition is foreshadowed.   I would think it wrong, however, that the exercise of my discretion under paragraph 160(2)(a), once the ground of error or omission has been made out, should be dependent on the applicant's showing that the proceedings in relation to which time is sought to be extended are "serious".   This is the case whether section 160 is to be applied to section 59 or to some other provision in the Act.   The same breadth of discretion in granting extensions of time pursuant to sub‑section 59(1) itself cannot, in my view, be imported into section 160 merely because section 160 is to be applied to the time specified in sub‑section 59(1).
         I therefore do not have to decide whether a serious opposition is intended in determining whether to grant an extension under paragraph 160(2)(a) of the time for lodging a notice of opposition under sub‑section 59(1).   In view of my conclusion that Liquid Air has established the ground of error or omission on the part of its agent or attorney, I therefore extend, pursuant to paragraph 160(2)(a), the time within which a notice of opposition may be lodged under sub‑section 59(1) until 16 November, 1982.

(F.J. SMITH)