Cryovac and Commissioner of Patents and American National Can Company(joinder Applicant) - [2001] AATA 23

DECISION AND REASONS FOR DECISION [2001] AATA 23

ADMINISTRATIVE APPEALS TRIBUNAL )

) No V00/486

GENERAL ADMINISTRATIVE DIVISION       )
           Re      CRYOVAC INC.
  Applicant
           And    COMMISSIONER OF PATENTS
  Respondent

AndAMERICAN NATIONAL CAN COMPANY
Joinder Applicant

DECISION

Tribunal Mrs Joan Dwyer, Senior Member

Date19 January 2001
PlaceMelbourne

Decision 1. The Tribunal refuses the application of American National Can Company to be made a party to this proceeding. 2. The Tribunal directs that the matter be listed for hearing on Tuesday 13 February 2001.

(Sgd) Joan Dwyer
Senior Member
PRACTICE AND PROCEDURE - application to be joined as a party - whether joinder applicant has interests affected by the decision under review - whether Tribunal's discretion should be exercised to join joinder applicant as a party to the proceeding - duty to provide a fair hearing - whether interests of the joinder applicant are substantially or significantly different from those of the respondent - joinder application refused
Patents Act 1990 s 223(1), (2), (3) and (4)

Control Investments Pty Ltd and Australian Broadcasting Tribunal (No 1) (1980) 3 ALD 74

Custom Credit Corporation Ltd v Lupi [1992] 1 VR 99

Melsom v Deputy President Forrest (1996) 42 ALD 261

Re Marine World Victoria and Minister for Arts, Heritage and the Environment (1986) 10 ALD 262

Re Peters and Minister for Aged Services (1999) 56 ALD 561

REASONS FOR DECISION

19 January 2001 Mrs Joan Dwyer, Senior Member

The substantive application for review in this matter is an application lodged by Cryovac Inc. ("Cryovac") seeking review under s 224 of the Patents Act 1990 ("the Act") of a decision made by a delegate of the Commissioner of Patents ("the Commissioner") on 24 March 2000 to refuse Cryovac's application for an extension of time under s 223(2) of the Act. That decision was made without proceeding to advertise the application for an extension of time, notwithstanding that the application was for an extension of time for more than three months and s 223(4) of the Act provides:
(4)Where an application is made for an extension of time for more than 3 months, the Commissioner must advertise the application in the Official Journal.
The Commissioner claimed on the basis of s 223(1) – (3) that she was not obliged to advertise the application. Thus it is necessary to set out s 223(1) – (4). They provide:
(1)Where, because of an error or omission by the Commissioner, a Deputy Commissioner or an employee, a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner must extend the time for doing the act.
(2) Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
(3)The time allowed for doing a relevant act may be extended, whether before or after that time has expired.
(4) Where an application is made for an extension of time for more than 3 months, the Commissioner must advertise the application in the Official Journal.
The delegate of the Commissioner made her decision after conducting what is described by the respondent in paragraph 7 of its Statement of Facts and Contentions as a " preliminary hearing . . . to determine the existence or otherwise of the necessary pre-condition for an application to extend time to do a "relevant act" ". The respondent contended in paragraph 7 that, "the delegate made no decision refusing an extension of time, although this was the practical outcome resulting from the failure of the applicant to satisfy section 223(2)(a) or (b) of the Act." That is not in fact an accurate statement of the delegate's decision. The delegate in her decision (T2 p12) concluded:
Whilst I accept that there may have been an error in either the inclusion of possibly confidential material in USSN 983017 or in the decision to withdraw an Australian application based on the possibility that there could be confidential material in USSN 983017, the applicant has failed to establish that there was a causal link between these possible errors and the relevant act of filing of a convention application based on USSN 976122. Therefore, I find that there is no prima facie case to proceed to advertisement under section 223(4) and I refuse the section 223 application. (emphasis added)
Cryovac seeks review of that decision. In Cryovac's Statement of Facts and Contentions the issues were set out as follows:
12.The issues which arise for determination of this application are whether the Commissioner of Patents by her Delegate is entitled:
(i)to refuse to advertise an application for an extension of time under section 223(2) where the application is for an extension of time for more than 3 months; and
(ii)to conduct a preliminary hearing to determine whether an application for an extension of time for more than 3 months should be advertised; and
(iii)at such a preliminary hearing to refuse an application for an extension of time for more than 3 months under section 223(2) of the Act.
The application before the Tribunal on 6 December 2000 was an application by American National Can Company ("ANCC") under s 30(1A) of the Administrative Appeals Tribunal Act 1975 (the "AAT Act") to be joined as a party to the proceeding between Cryovac and the Commissioner.
Mr C Jordan a solicitor appeared for Cryovac, Mr R Frazzetto of Counsel appeared for the Commissioner and Ms P Tate of Counsel appeared for ANCC.
Cryovac, as stated in paragraphs 1 and 2 of its Statement of Facts and Contentions is the assignee of patent application No. 681116 filed by W.R. Grace and Co-Conn ("the Grace application") on 20 April 1994. The Grace application was assigned to Cryovac in March 1999 and on 10 June 1999 Cryovac proposed amendments to the patent request seeking to claim an earlier priority date of 13 November 1992 based on an earlier US patent application No. 976122 ("the US basic application").
On 10 June 1999 Cryovac applied for an extension of time of six months from 13 November 1993 to 20 April 1994 within which to file a patent application claiming the convention priority date of 13 November 1992 based on the US basic application.
Ms Tate submitted that ANCC should be joined as a party to the application. She submitted that s 30(1A) of the AAT Act imposes a two stage test. First, a party seeking to be joined, must establish that it has interests which are affected by the decision under review. Secondly, the joinder applicant must show that the Tribunal's discretion under s 30(1A) should be exercised in favour of the party seeking joinder. It has been accepted in the relevant authorities that the two stage approach is appropriate (see Re Marine World Victoria and Minister for Arts, Heritage and the Environment (1986) 10 ALD 262, Melsom v Deputy President Forrest (1996) 42 ALD 261 and Re Peters and Minister for Aged Services (1999) 56 ALD 561).
Ms Tate submitted that ANCC's interests are affected by the decision under review. As the transcript of the preliminary hearing (ex R3) shows, ANCC did appear at the preliminary hearing and successfully opposed the extension of time sought by Cryovac. Mr Tadgell, the patent attorney chiefly responsible for the care and conduct of all patent related matters for ANCC, deposed in paragraphs 5 to 7 of his affidavit sworn on 20 November 2000 that ANCC is the patentee of Australian Patent 701139 with an Australian filing date of 22 June 1994. ANCC claims an earliest priority date from the United States of 24 June 1993 for that patent, which is titled "Improved structured of polymers made from single site catalysts". Those matters are not in dispute.
Mr Tadgell in paragraph 7 of his affidavit sworn 20 November 2000 stated:
7.. . . The Grace application is titled "Heat shrinkable films containing single site catalysed copolymers". The subject matter of many of the claims of the Grace Application is arguably similar, if not the same as that covered by many of the claims in the ANCC patent.
Although the Grace application was filed on 20 April 1994, I was told by Counsel that the patent has not yet been granted or refused. In an application for an extension of time in which to lodge evidence in answer (ex DJT-2 to Mr Tadgell's affidavit) Cryovac stated:
In the event that the application for extension of time under Section 223 is successful, the claims of the present application will have a priority date earlier than that of 72118/94 [the ANCC patent] and 72118/94 will no longer form part of the prior art base upon which the novelty of the present application is assessed.

ANCC is on the record as opposing the substantive application lodged by Cryovac in 1994.

In substance the issue in regard to the grant of the patent sought by Cryovac is a contest between Cryovac and ANCC as to which applicant can claim the earlier priority date. If Cryovac succeeds in obtaining the extension of time, as stated in ex DJT-2, the Grace application which has been assigned to Cryovac will have a priority date earlier than that of the ANCC patent which "will no longer form part of the prior art base upon which the novelty of the [Cryovac] application is assessed."
The decision under review rejected the Cryovac application for an extension of time. Thus the ANCC patent at present has a priority date earlier than that in the substantive Grace application as assigned to Cryovac. It does "form part of the prior art base upon which the [substantive Cryovac] application is to be assessed."
On that evidence I find that the interests of ANCC are affected by the decision under review, within the meaning of that term in s 30(1A) of the AAT Act. The decision under review has had the effect of preserving the situation where the ANCC patent priority date is earlier than that which can be claimed by Cryovac. That is a commercial benefit to ANCC.
Having concluded that ANCC's interests are affected by the decision under review the next question is whether the Tribunal should exercise its discretion to join ANCC as a party to the proceeding.
Ms Tate submitted that the interests of ANCC are substantial and significantly different from those of the Commissioner who is already a party. She referred the Tribunal to Re Marine World at pp271-272 where at paragraphs 32 and 33 Deputy President Thompson emphasised that s 30(1A) of the AAT Act now expressly gives the Tribunal a discretion whether or not to join a person whose interests are affected as a party to the proceeding. Deputy President Thompson listed various factors to which the Tribunal must have regard in exercising the discretion. He referred to:
1. The nature of review proceedings before this Tribunal.
2.The duty to provide a fair hearing and to carry out the review as expeditiously as the subject matter of the review permits.
3.The increased cost of the proceeding to the applicant and the respondent which will result from the joinder of additional parties.
4.The cost to public funds.
5.The endeavour to contain the costs to what is sufficient to enable the Tribunal to undertake a proper review.
Deputy President Thompson concluded that it is only if the interests of the party affected by the decision under review are both substantial and significantly different from those of other parties, that joinder can be justified.
The first issue concerns the need to provide a fair hearing. There was some question as to whether the application of Cryovac before this Tribunal was to be decided simply on legal submissions, or whether the substantive issue of the nature of the error or omission relied on by Cryovac as the basis of its extension application under s 223(2), was to be further explored. I note that the Statement of Facts and Contentions of the applicant does not indicate that the factual issue is to be one of the issues in the hearing before this Tribunal. As quoted in paragraph 4 of these reasons it sets the issues out as follows:
The issues which arise for determination of this application are whether the Commissioner of Patents by her Delegate is entitled:
(i)to refuse to advertise an application for an extension of time under section 223(2) where the application is for an extension of time for more than 3 months; and
(ii)to conduct a preliminary hearing to determine whether an application for an extension of time for more than 3 months should be advertised; and
(iii)at such a preliminary hearing to refuse an application for an extension of time for more than 3 months under section 223(2) of the Act.
That indicates that the issue before the Tribunal is a matter of the construction of the relevant legislative provision. It is a matter between Cryovac and the Commissioner. If Cryovac's contention is correct, the Commissioner has wrongly allowed ANCC to appear at a hearing prior to the advertising of the application for an extension of time and has refused the application as a result of that hearing. If Cryovac succeeds in its application the Commissioner would be required to advertise the application, but could then conduct a further hearing at which ANCC could again appear. If the Commissioner succeeds before the Tribunal, ANCC would maintain its current commercial advantage whereby it has the earlier convention priority date.
One aspect of Cryovac's case is that ANCC should not have been heard at a preliminary hearing of the Cryovac application for an extension of time prior to the advertising of that application. Cryovac claims that it would be repeating the allegedly incorrect procedure adopted by the Commissioner, if ANCC were to be joined as a party in the current application before this Tribunal. Cryovac submits that it is not unfair to ANCC to not join it as a party at this stage. Either the Commissioner will succeed before this Tribunal thus maintaining ANCC's current position of advantage or Cryovac will again have the opportunity to be heard at a hearing before the Commissioner after advertisement as required by s 223(4) of the Act.
The proceeding has already been substantially delayed by the ANCC joinder application. The application before the Tribunal was lodged by Cryovac 20 April 2000. The matter would have been heard on 13 November 2000 were it not for the joinder application. Ms Tate assured the Tribunal that if ANCC were joined as a party, it would prepare its submissions as speedily as the Tribunal directed. However if submissions are heard from more than two parties that necessarily extends the time a hearing takes. Any extension of time spent in a hearing is likely to add to the costs of a hearing. The joinder of ANCC may also widen the issues beyond the narrow legal issue raised by Cryovac in its Statement of Facts and Contentions. If witnesses are called and cross-examined by more than two parties that also extends the time a hearing takes.
During the hearing I did indicate that the interests of ANCC seem to be substantial in a commercial sense. If they succeed in holding an earlier priority date than the Grace application, there is no doubt a substantial commercial benefit in having the earlier priority date. However those substantial interests are not prejudiced by not allowing ANCC to protect them in the current proceeding. They will either be upheld, or else there will be another opportunity to protect those interests before the Commissioner.
The next question is whether the interests of ANCC are substantially different from those of the Commissioner. The Commissioner's interest is to support the procedure her delegate adopted of conducting a preliminary hearing in this matter, at which ANCC was represented, prior to any advertisement. ANCC has the same interest.
The difficulty with granting the application by ANCC to be joined as a third party is, as Mr Jordan submitted, that it imposes further hurdles on Cryovac which already has been subjected to a challenged preliminary hearing at which its opponent for priority date, ANCC, was represented. Mr Jordan submitted that its application should have gone to advertisement and then to a hearing at which ANCC would have been represented as the opposition party, but instead it had already had to appear at a hearing at which ANCC was represented prior to advertisement. It now appears to challenge that allegedly unauthorised procedure. ANCC, if joined as a party, will make submissions in support of the procedure adopted by the Commissioner's delegate.
Ms Tate's answer to that submission was that "my client will never again have the right to argue that the delegate was correct in dismissing the application for an extension of time summarily." In paragraph 16 of her submission Ms Tate submitted:
The interests of ANCC are significantly different from those of the other party to the proceeding, the Commissioner, as she is a non-partisan decision-maker who is not a party to the substantive Opposition proceeding. The interests of ANCC could not be adequately protected or represented by the Commissioner in this proceeding and nor would the protection of ANCC's interests be a proper role for the Commissioner to adopt or to be seen to adopt.
I consider that the application for review of the decision to refuse the extension of time without proceeding to advertisement should be dealt with by this Tribunal on the basis that the Commissioner is a non-partisan decision-maker whose duty is to comply with the provisions of the Act. There is no role for a partisan opposing party to take at the stage of deciding whether advertisement is required by the Act, whenever an application is made for an extension of time for more than three months. To allow the opposing party to be heard on this application would unfairly distort the application. It is appropriate for the non-partisan Commissioner, and the Commissioner only, to have the opportunity to persuade the Tribunal that the procedure adopted in this matter is authorised by the Act.
Ms Tate submitted that ANCC should not be shut out from the proceeding. It should not be precluded from at least having the opportunity to make submissions as to why the delegate's decision was the right one. She added:
Fairness dictates that ANCC should be given the opportunity to make submissions to retain the decision made in its favour. It should not be subjected to a second hearing in relation to the extension without having had the opportunity to show that neither an advertisement nor a second hearing is necessary.
That submission sounds as though ANCC seeks the opportunity to put the Commissioner's case. That would be appropriate if the Commissioner had adopted the attitude that she should not appear before the Tribunal to defend her own decision, as discussed by the High Court in R v Australian Broadcasting Tribunal; Ex parte Hardiman (1980) 144 CLR 13. However that is not the situation here. The Commissioner has lodged a 27 paragraph Statement of Facts and Contentions asserting that the conduct of the delegate was within power and appropriate. Mr Frazetto informed the Tribunal that the Commissioner consents to the joinder of ANCC but intends to appear to present substantial argument to the effect that the procedure the delegate adopted is within power, and in accordance with the relevant statutory provisions, and was appropriate.
In Custom Credit Corporation Ltd v Lupi [1992] 1 VR 99 at p112 O'Bryan J said:
The role of the tribunal in appearing to argue the correctness of a decision should be dictated by the appearance or non-appearance of the litigants at the hearing. Should no party appear to uphold the correctness of a decision it might be desirable that the tribunal be represented to present an argument to assist the court. Should a party appear to uphold the correctness of a decision it will usually be undesirable for the tribunal to play a role in the proceeding.
In the present case the tribunal was represented by two counsel who took the side of the owners and did not advance any argument which would assist the plaintiff. The argument advanced by counsel for the owners canvassed very thoroughly the same ground.

Because of the nature of administrative review the Tribunal does frequently hear matters in which a decision-maker is a represented party. However where a decision-maker does appear and present substantive argument that is a factor to weigh in the scales in exercising the discretion to decide for or against joinder of another party. O'Connor J, President, in Boyd v Comcare (1991) 23 ALD 392 at p394 made the point that the common interest of an employer and Comcare could be adequately represented by Comcare. Here the common position of ANCC and the Commissioner can be adequately represented by the Commissioner. In so far as ANCC has commercial interests they will be safeguarded, if the Commissioner is not successful before the Tribunal, by a further hearing before a delegate after appropriate advertisement.
In Control Investments Pty Ltd and Australian Broadcasting Tribunal (No 1) (1980) 3 ALD 74 Davies J, President said at p81:
While it will ordinarily be the duty of the Tribunal to make an order joining a party whose interests are affected by the decision under review, that duty is limited by the function which the Tribunal performs and by its duty to provide a fair hearing and to deal with the matter as expeditiously as the subject matter of the review permits.
In Marine World, Deputy President Thompson, at p272 said that it is only if the party seeking to be joined has interests which are "significantly different" from the other parties that joinder can be justified. O'Bryan J in Lupi inferred that it was undesirable to have both a decision-maker and a party affected appear to uphold the correctness of a decision.
I find that the interests of the Commissioner and ANCC relevant to the procedural issue raised by Cryovac are not substantially different. There is no reason to have more than one party to present the substantive arguments for the Commissioner, and it would not be fair to Cryovac to do so for reasons of cost and delay. The Commissioner and ANCC have the same interest in the success of the respondent at the review hearing before the Tribunal. The commercial interests of ANCC will be preserved whatever the result of the application for review. I will exercise my discretion under s 30(1A) to refuse the application by ANCC to be joined as a party to the review and direct that this matter be listed for hearing on Tuesday, 13 February 2001.
I certify that the 34 preceding paragraphs are a true copy of the reasons for the decision herein of Mrs Joan Dwyer, Senior Member
Signed:         Anne O'Rourke
  Associate
Date/s of Hearing  13 November and 6 December 2000
Date of Decision  19 January 2001
Counsel for the Applicant        Nil
Solicitor for the Applicant         Davies Collison Cave
Counsel for the Respondent    Mr R Frazzetto
Solicitor for the Respondent    Office of the Australian Government Solicitor
Counsel for Joinder Applicant Ms P Tate
Solicitor for Joinder Applicant Phillipe Ormonde & Fitzpatrick