CSIRO v HBH Technological Industries

[1992] APO 9

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No. 610430 by Commonwealth Scientific and Industrial Research Organisation, Opposition by H.B.H. Technological INDUSTRIES P/L, and Objection to an Extension of Time to lodge Notice of Opposition.

Background

Application No. 610430 in the name of Commonwealth Scientific and Industrial Research Organisation ('CSIRO') was advertised accepted on 16 May 1991. On 15 August 1991 H.B.H. Technological Industries P/L ('H.B.H.') filed a document which appeared to be an application for an extension of time under regulation 55 of the Patents Act 1952 to extend the time for serving evidence in support of an opposition. The circumstances and grounds given in the application are: "evidence in support is still being gathered and further time is required to complete and formalise that evidence".

On 28 August 1991, the Senior Clerk sent H.B.H. and CSIRO letters stating "although the request refers to an extension under Regulation 55 of time for serving evidence in support, the only purposive intent that can be given to the document is to treat it as an application under Section 59(1) to extend the time for filing a Notice of Opposition."  In a letter dated 10 September 1991, CSIRO's patent attorney stated "Commonwealth Scientific and Industrial Research Organisation object to the Application for Extension under Regulation 55 for serving Evidence in Support by H.B.H. Technological Industries Pty Ltd, being treated as an application under Section 59(1) to extend the time for filing a Notice of Opposition".  After a request by the Patent Office for clarification, CSIRO's attorneys advised that "if the Commissioner decided to treat the Application for Extension under Regulation 55 for serving Evidence in Support by H.B.H. Technological Industries Pty Ltd as an application under Section 59(1) to extend the time for filing the Notice of Opposition, the Commonwealth Scientific and Industrial Research Organisation would object to the so treated application under Section 59(1) to extend the time for filing the Notice of Opposition."  A notice of opposition was lodged by H.B.H. on 8 November 1991.

The matter was heard in Canberra on 29 November 1991.  H.B.H. waived its right to be heard and filed written submissions.  CSIRO was represented by Mr John McCann, patent attorney with Spruson and Ferguson, Sydney.

Submissions

H.B.H. filed a written submission two days before the hearing.  The submission took the form of a letter from H.B.H. signed by Mr Martin Harris, Managing Director of H.B.H.  This submission addressed the reasons for an extension of time.

At the hearing, Mr McCann said that if a request to extend the time for lodging a notice of opposition had not been filed within the prescribed three month period, then the Commissioner had no power to consider an extension.  Mr McCann then made a detailed analysis of the views expressed in the Senior Clerk's letter dated 28 August 1991.  This letter construed the document filed by H.B.H. on 15 August 1991 as an application for an extension of time to lodge a notice of opposition.  The relevant points of this analysis are:

.  purposive construction is used to ascertain the meaning of the words actually used, not the words that were intended to be used, and is inappropriate when there is no ambiguity on the face of the document.

. the request filed is clear on its face: it is a request to extend the time for serving evidence in support under regulation 55 of the Patents Act 1952.

.  there is a need for certainty in interpreting documents.  Any significant departure by the Commissioner from the plain meaning of a document will lead to unacceptable uncertainty.

Mr McCann stated that CSIRO felt strongly that the approach that had been adopted was so skewed in favour of H.B.H. that the Commissioner appeared to be desperate to find in favour of H.B.H. on this point.  Mr McCann asked me whether I was prepared to consider CSIRO's submission that it was wrong to treat the document as a request to extend the time for lodging a notice of opposition.  I said I was prepared to consider the matter.

Decision

I believe that as part of deciding whether an extension of time can be allowed, I must consider whether a request to extend time has been made.  If a request has not been made, the Commissioner has no authority to allow an extension of time.  This requires me to consider the construction of the document filed by H.B.H., and the extent to which the Commissioner can deviate from a literal construction of a document.

The Commissioner has power under regulation 22.16 to treat a document which is not in accordance with an approved form as either not having been filed, or as having been filed and directing that the document be made to accord to with the approved form.  There is no approved form for filing a request to extend the time for lodging a notice of opposition under section 59(1) of the 1952 Act.  As a consequence, regulation 22.16 does not apply to the present situation.

I will now consider what general power the Commissioner has to construe a document.  Purposive construction of a document has been approved in a number of cases.  In R v Commissioner of Patents, Ex parte Weiss (1939) 61 CLR 240 the High Court considered a document which purported to be a notice of opposition, but was given in a firm-name rather than the names of the individuals constituting the firm. Dixon J said that despite its inadequacy, the document "notifies a real intention" and as such "forms a sufficient foundation to entitle the Commissioner to proceed". In Kaiser Aluminum & Chemical Corp v Reynolds Metal Co (1969) 120 CLR 136 the High Court considered a notice of opposition which was complete except that it did not show a locus standi.  Kitto J thought that the requirement to state locus was merely directory, "with the result that the absence of the statement does not make the notice something less that a notice of opposition".

The practice of the Patent Office has been to try to determine the purpose of a document if there is doubt about its meaning.  Clearly this is a practical approach provided no party is disadvantaged.  In Abacus Engineering Ltd v John Cananzi and Cananzi Hydropneumatics [1984] APOR 3 a document purporting to be a notice of opposition to restoration, to which nine objections were taken, was held to be effective for its purpose because it presented the essential facts that it had to convey, and "neither the Patent Office nor, more significantly the patent attorneys for the patentee, had any difficulty in recognising" what the document was meant to be.  In Newbury v Sutherland (Patent Office decision of 9 December 1991 concerning patent application number 602930) the Delegate of the Commissioner considered that a form headed "Application for extension of period of acceptance" was effective as a request for an extension of time to serve evidence in support because the same form was used for both types of request, and "the form as lodged correctly identifies the application number, the applicant and the period of extension sought.  It also states the circumstances and grounds relied on for the extension and was accompanied by the correct fee ($135) for a 3 month extension to lodge evidence-in-support.  While it is regrettable that any errors occur in what ought to be a simple matter of completing a form, nevertheless I believe the form does contain sufficient information to indicate an extension of time is being sought."  Such a practice is clearly consistent with the decisions of the High Court. 

The document that I am considering has numerous deficiencies.  The number of the application being opposed is given as "PCT/AU89/00323", which is not an Australian application number, and the patent applicant is given as "Timothy Peter Dabbs".  The Patent Office records show that Australian patent application 610430 in the name of CSIRO corresponds to PCT application number PCT/AU89/00323, of which Timothy Peter Dabbs is the inventor and the applicant in the United States.  I think these are minor deficiencies if the meaning of the rest of the document is clear.  However, the major deficiency with the document is that it requests an extension under regulation 55 of the 1952 Act.  Application number 610430 was advertised accepted under the 1990 Act.  Therefore, the provisions of regulation 55 of the 1952 Act do not apply to this application.  Consequently, a request to invoke regulation 55 is meaningless, and the purpose of the document is unclear. 

The present situation differs from the previous cases because the form itself provides no basis for the construction that is sought to be placed upon it.  Indeed, this is not simply a case of a form containing errors, but is a situation where the wrong form has been used.  The document indicates that a three month extension is sought, but there is no suggestion in the document that it is a request to extend the time for lodging a notice of opposition under section 59(1); even the circumstances and grounds given are not what would be expected of a request under section 59(1).  I believe that the Commissioner should not consider a section 59(1) extension unless reasonably satisfied that he or she has been requested to do so.

The document filed by H.B.H. suggests to me that it may be a request for an extension of time to serve evidence in support under regulation 5.10 of the Patents Act 1990, and that a regulation of the repealed Act was mistakenly cited. This construction leads to the document having no effect since a notice of opposition had not been lodged. I consider that the Office should not construe a document to give it a meaning which is not suggested by the document itself, otherwise it would not be possible to take any document at face value. Instead, the Office should inform the party filing such a document that the purpose of the document is not clear, and the party may file a new document to clarify the situation if it wishes.

I think that H.B.H. should have asked for an extension of time to lodge a notice of opposition, but I consider that it is not clear that this was its intention.  I find support for this view in a statement of Mr Harris in the covering letter to his submissions: "we do acknowledge that had we had a better understanding of the new objection procedures, or had we been able to afford to use a Patent Attorney in this matter, we may well have been advised to have proceeded differently".  In my view purposive construction of a document may be used to give effect to the intention, but not to correct the intention.  If H.B.H. mistakenly thought that an extension of time under regulation 55 (or regulation 5.10) was required, then there may have been an error or omission.  If this is the situation, H.B.H. can request an extension of time under section 223 in order to lodge a notice of opposition.

As a consequence of my finding that the document is not a request to extend the time for lodging a notice of opposition, there is no request for me to consider.

Conclusion

I believe that the Patent Office cannot treat the document filed by H.B.H. as a request to extend the time for lodging a notice of opposition.  As a result, a request was not filed and there is no extension to consider.

Costs

Costs normally follow the event.  Consequently, I award costs against H.B.H.

(S.D.BARKER)
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:   Spruson & Ferguson, Sydney