Concorde Trading Pty Ltd v Croner Trading Pty Ltd
[1991] APO 29
•16 August 1991
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 571375 by CONCORDE TRADING PTY LTD and Opposition thereto by CRONER TRADING PTY LTD and an application to extend the time for filing evidence in reply.
Background
Patent application no. 571375, titled JUMPBALL, was lodged on 30 July 1986 by J.L. Blankenzee. The application was accepted on 14 April 1988. Subsequent to acceptance there have been several changes in the name of the applicant; the applicant is now recorded as CONCORDE TRADING PTY LTD.
Croner Trading Pty Ltd filed notice of opposition on 13 July 1988. Evidence in support of the opposition was completed on 15 May 1989. Evidence in answer was served on 15 June 1990. This matter relates to two applications under regulation 57 to extend the time for filing evidence in answer from 15 March 1991 to 15 June 1991, and from 15 June 1991 to 15 September 1991. Initially the patent applicant objected to both applications to extend the time for filing evidence in answer; however prior to the hearing the applicant withdrew their objection to the earlier of these applications. Thus the matter that I must decide is whether the latter extension should be allowed.
A hearing on the matter was held in Canberra on 25 July 1991. The applicant was represented by Mr. A. Duncan of Davies and Collison on behalf of Arthur S. Cave and Co., and the opponent was represented by Mr. R. Cross of Phillips Ormonde & Fitzpatrick.
The application for extension of time
The circumstances and grounds given in the application for an extension of time are as follows:
Since 15 March 1991 our independent expert has conducted tests for the purpose of evaluating the criteria on which tests outlined in declarations by Mssrs Thompson and Molone were conducted. [These form part of the evidence in answer.] While our expert's tests show that the best aspects of those criteria are inappropriate, they also have highlighted the need for more sophisticated evaluation. Such evaluation necessitates use of equipment which is not immediately available to our expert, and a testing authority therefore
has been briefed in this matter to enable further independent testing. This further testing has been arranged, and we are now awaiting completion of this work prior to completion of our evidence in reply. The need for the further testing has delayed completion and service of our evidence in reply, and further time is required for this. However we believe that service of this evidence will be effected in the further time now sought.
Submissions
At the hearing the opponent submitted that:
the time now requested for filing evidence in answer (a total of 15 months) is comparable to the time for filing the evidence in support (10 months) and the evidence in answer (13 months).
(ii)the extension is required to enable further testing to be done - this testing is in direct reply to the tests used in the evidence in answer.
(iii) the tests used in the evidence in answer purport to refute the evidence in support. Those tests were conducted by a NATA testing authority, which is purportedly skilled in the testing of toys. It is not contested that those tests are unsatisfactory in what they have tested and how those tests were done - rather it is contested that the tests were inappropriate for evaluating or refuting the evidence in support.
(iv)as a NATA testing authority is an independent authority, it may be assumed that the evidence from a NATA warrants greater weight than the evidence in support from the declarant Bayly. However the criteria underlying the NATA tests are inappropriate, and this needs to be made clear.
a period comparable to the period taken for the evidence in answer is reasonable as it is necessary to devise more-relevant tests than those conducted by the NATA.
Principle submissions made at the hearing by the applicant were:
It was clear from the history of this case that the opponent was 'expert shopping' - ie trying to find someone who is prepared to supply evidence in reply which supports the opponent's case. The fact that the first expert has completed his evidence but no evidence has yet been provided indicates that the evidence does not suit the opponent's case; and for that reason, perhaps the second expert had to be introduced so that evidence more suitable to the opponent's case could be obtained. The applicant also noted that the need to refer the testing to another expert suggests that the first expert could hardly be a true expert if he was incapable of conducting the tests.
The applicant also submitted that:
(i)an extension was inappropriate where it was apparently required to obtain evidence from a 'reluctant' expert (and referred to Stord Bartz A/S v The Dupps Co [1991] 17 IPR 157 at 160), and
(ii) lack of diligence at earlier stages of the time for filing evidence in reply should lead to a refusal to grant an extension at later stages (and referred to The Dupps Co v Stord Bartz A/S [1991] 19 IPR 17)
In response, the opponent asserted that there has been no difficulty on the opponent's part with any expert in obtaining evidence or cooperation (except for a period when their expert was unavailable), and there is no question that any of the expert's evidence has been found to be unsuitable.
The opponent elaborated the reasons for requiring further tests - the tests used in the evidence in answer were tests based on static loading conditions; those tests were relatively simple tests to perform, but they bear little relevance to how the product performs in use; having regard to the invention it has not been easy to go beyond a static test to a test in actual use; initial tests have been useful, but do not unambiguously refute the static tests; more sophisticated tests with better equipment is needed; and the equipment needed for the dynamic tests is not available to the first expert.
Decision
In this class of action, before an extension of time is allowed, the Commissioner:
must be satisfied that applicant seeking such an extension has made out a proper case justifying the extension; and
(ii)must consider the interests of the parties as well as the public interest.
It seems to me that the question of whether the opponent has had sufficient time to prepare and file evidence in reply must be justified against the totality of actions of the opponent since becoming entitled to file that evidence. Since that time (and prior to the current application for an extension of time), the opponent has applied for 3 extensions of time. The reasons given for each of these extensions can be conveniently summarized as follows:
Application to extend to 15 Dec. 1990 - Attention given to the tests in the evidence in answer; promptly instructed an evaluation of those tests by an independent expert; preparation of other aspects of the evidence in reply commenced and proceeding without delay.
Application to extend to 15 Mar. 1991 - evaluation of tests in evidence in answer proceeding - but not commenced until early November as independent expert unavailable; expectation that report completed no later than mid-January.
Application to extend to 15 June 1991 - independent expert essentially unavailable since mid-December, but his evaluation of the tests (of the evidence in answer) completed and in a form suitable for inclusion in a declaration by him; partially completed evidence by a second declarant not yet able to be finalized - due to complementary nature of evidence and delays beyond their control with the first expert's evidence.
I agree with the applicant that it is possible to interpret these reasons for an extension of time as being consistent with the opponent indulging in 'expert shopping'. However I am of the view that the reasons are more readily consistent with the proposition that the expert is willing (if albeit unavailable for a period) and that there have been technical problems associated with the tests which require further testing.
It is also my view that if an opponent seriously questions the validity of tests presented in the evidence in answer, it is both reasonable and in the public interest that the opponent be given a reasonable opportunity to demonstrate any deficiencies in those tests. At this time I believe that the opponent is seriously challenging the tests used in the evidence in answer, and the time taken to date in trying to demonstrate alleged deficiencies in those tests has some justification.
Having regard to all the information available to me on this matter, including the opponent's elaboration provided at the hearing, I conclude that:
the basis of the evidence in reply is a response to the tests undertaken by the applicant in their evidence in answer,
there have been delays due to:
unavailability of an expert, and
a perceived need to provide a different type of test evolving from the investigations, and
those delays are not unreasonable in the circumstances.
As a result, I allow an extension of time until 15 September 1991 in which to lodge evidence in reply.
Costs
Normally in actions of this nature costs follow the event. However, an applicant for an extension of time has a duty to give a full and frank disclosure of all the surrounding circumstances which led to the need for an extension [Kimberly-Clark Ltd v Commissioner and Minnesota Mining and Manufacturing Co 13 IPR 569]. In this case the reasons provided by the opponent indicated in some detail the reasons for the extension. However they failed to give all the surrounding circumstances, in that they failed to indicate that the extra tests (and thus the need for the extension sought) arose from a perceived need to conduct dynamic rather than static tests - the reference to 'more sophisticated tests' does not constitute a frank disclosure of why more tests were required. As a result, the reasons for the extension were open to misinterpretation.
Having regard to all the circumstances, I make no award of costs.
(D. Herald)
Assistant Commissioner of Patents
Patent Attorneys for the Applicant : Arthur S. Cave & Co., Sydney
Patent Attorneys for the Opponent : Phillips Ormonde & Fitzpatrick, Melbourne
OFFICIAL NOTICES
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 571375 by COCORDE TRADING PTY LTD
Title: JUMPBALL
Action: Objection to Extension of time to lodge evidence-in-reply.
Decision: Issued ;extension of 3 months granted.
Arthur S. Cave & Co.
SYDNEYNSW 2000
Re: Patent Application No. 571375 by CONCORDE TRADING PTY LTD and Opposition thereto by CRONER TRADING PTY LTD and an application to extend the time for filing evidence in reply.
Please find enclosed the decision of the delegate of the Commissioner in respect of this matter
Senior Clerk, Patents
Pillips Ormonde & Fitzpatrick
MELBOURNE VIC 3000
Re: Patent Application No. 571375 by CONCORDE TRADING PTY LTD and Opposition thereto by CRONER TRADING PTY LTD and an application to extend the time for filing evidence in reply.
Attn. Mr. R. Cross
Please find enclosed the decision of the delegate of the Commissioner in respect of this matter
Senior Clerk, Patents
Davies & Collison
CANBERRA ACT 2600
Re: Patent Application No. 571375 by CONCORDE TRADING PTY LTD and Opposition thereto by CRONER TRADING PTY LTD and an application to extend the time for filing evidence in reply.
Attn.Mr. A. Duncan
Please find enclosed the decision of the delegate of the Commissioner in respect of this matter
Senior Clerk, Patents
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