Daido Metal Company Ltd v Gould Inc

[1983] APO 5

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Application No. 509526 for a Patent by DAIDO METAL COMPANY LTD.

‑ and ‑

In the Matter of Opposition thereto by GOULD INC.

‑ and ‑

In the Matter of Application by GOULD INC. for Extension of Time in Which to Serve Evidence‑in‑Reply.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         This matter concerns an application by Gould Inc. for an extension of time of 3 months within which to serve evidence‑in‑reply.
         The applicant's evidence‑in‑answer was served on the opponent on 5 October, 1982 and therefore evidence‑in‑reply was due to be served by 5 January, 1983.   On 4 January, 1983, Gould Inc. lodged an application for extension of time under the provisions of regulation 57 requesting a 3 month extension to 5 April, 1983 within which to serve evidence‑in‑reply.   This application was opposed by Daido Metal Company Ltd. and the matter was set down for hearing in Melbourne on 7 February, 1983.   Mr. G.C. Pryor, patent attorney, of Davies & Collison, Melbourne, represented Daido Metal Company Ltd. and Mr. R.N. Cross, patent attorney, of Phillips, Ormonde & Fitzpatrick, Melbourne, represented Gould Inc.

The circumstances and grounds given in the application for extension of time are as follows:

Applicant's evidence in answer is under consideration, while we also are endeavouring to obtain for consider‑

ation copies of additional material referred to in, but not provided with, that evidence of applicant.   Additionally, it has not yet been possible to consult with Dr. B.A. Parker on the complete evidence in answer due to his absence in the United Kingdom since mid‑

September 1982.   Further time is required to enable us to complete our considerations and for consultations with Dr. Parker, and for preparation and service of our evidence in reply."

Mr. Pryor, on behalf of the applicant for the patent in opposing the extension request, submitted that the reasons given for the extension request did not support an extension being granted.   He considered the reasons as being twofold, firstly the question of the opponent obtaining "additional material" referred to in the evidence‑in‑answer and secondly the need to consult with Dr. Parker.
         On the first reason, Mr. Pryor submitted that in his view the only material referred to in but not exhibited by way of copies in the evidence‑in‑answer were a US and a UK patent specification referred to in the applicant's MORI declaration, and he believed the opponent should have experienced no difficulties in obtaining copies of those either directly itself from libraries or by request from DAIDO METAL.   On the second reason in support of the request, Mr. Pryor's submission can be summarized as follows.       

The statement fails to indicate:            

‑whether Dr. Parker needed to consider either or both declarations lodged by the applicant,

‑the circumstances of Dr. Parker's absence,

‑how long Dr. Parker was expected to be away or unavailable for consultations,

‑what communications, if any, had transpired between Dr. Parker and the opponent's attorneys in the periods ‑

(a)4 August, 1982 (the date when applicant's HENSLER declaration was served) to his departure overseas, and

(b)while overseas.

‑what progress, if any, had been made by the opponent in preparing and serving its evidence‑in‑reply in the three months available.

Mr. Pryor argued that from the reasons given it seemed the opponent's consideration of the evidence‑in‑answer had been put in abeyance while Dr. Parker was overseas only to be considered further if or when he returned to Australia.
         Mr. Cross, on behalf of the opponent, submitted that in relation to the first reason for the extension request there were two additional documents sought by the opponent other than the two patent specifications mentioned by Mr. Pryor.   One of these documents was the "Metals Handbook" referred to in the HENSLER declaration from which certain definitions had been extracted.   Mr. Cross argued that it was necessary that the opponent have access to that publication in order to determine how the generalized definitions put forward by that publication related to the specific technology of the invention under opposition.   The other document was US Serial No. 704034, the application in the United States corresponding to the present Australian application, mentioned in the MORI declaration.   Mr. Cross added that in fact the opponent was seeking the US File Wrapper associated with US Serial No. 704034 which document gives the prosecution history on the US application.   He argued that the opponent should have full access to that document in order to be able to fully assess the applicant's evidence, particularly the trial results included in the MORI declaration.
         In relation to the absence of Dr. Parker, Mr. Cross advised that:

‑neither the opponent nor its attorneys were advised that Dr. Parker was going overseas,

‑consultation had begun with Dr. Parker before his departure overseas in relation to the HENSLER declaration,

‑since the extension request was lodged on 4 January, 1983, the attorneys for the opponent had learnt that Dr. Parker had returned to Australia on 31 December, 1982, had been on leave until 24 January, 1983 but uncontactable, and that Dr. Parker had contacted Mr. Cross on 2 February, 1983.

Mr. Cross submitted that it was appropriate that Dr. Parker should reply to the HENSLER declaration, and that Dr. Parker being an independent expert in the art in Australia was also an appropriate person to consider and reply to the MORI declaration.   He added that it was not a simple matter to find another expert in the field and skilled in the art in Australia to provide evidence, a difficulty the applicant had experienced itself when preparing evidence‑in‑
answer, and that the opponent felt it was appropriate that Dr. Parker who was familiar with the opposition so far should consider the evidence and reply to it on his return to Australia which had been expected to be before the end of 1982.   Mr. Cross stated that the two reasons for the extension request were interrelated since the opponent wanted Dr. Parker to study the additional material being sought.
         Mr. Pryor, replying to the submissions of Mr. Cross, stated that he believed there would be no difficulty in obtaining a copy of the "Metals Handbook" sought by the opponents since he understood it was a standard textbook reference on metallurgy in Australia.   He also submitted that he found it somewhat surprising that the opponent was not merely seeking US Serial No. 704034 but also the US File Wrapper relevant to that application.   He added that the reference in MORI's declaration to US Serial No. 704034 clearly did not encompass its File Wrapper.   In any event he believed the opponent was well aware of the prosecution of patent applications corresponding to the Australian application in other countries and found it surprising that only at this late stage of opposition proceedings they should seek the US File Wrapper on US Serial No. 704034.
         At the hearing both parties put submissions to me concerning the public interest and the interests of their respective parties in the overall opposition proceedings, and the need to consider those interests as circumstances relevant to the exercise of the Commissioner's discretion under Regulation 83A in respect of the present application for extension of time.   In my view it is clearly desirable, at least from the public and applicant's interest point of view, that the opposition proceedings be finalized as quickly as possible.   Nevertheless, Regulation 57 allows for the opponent to serve evidence‑in‑reply either within 3 months of service of applicant's evidence‑in‑
answer or within such further time as the Commissioner allows.   In deciding whether an extension of time should be granted, I will consider the two reasons set out in the application separately.  
         The first reason concerns endeavours to obtain copies of additional material referred to, but not exhibited with the evidence of applicant.   It seems to me that in relation to the publication "Metals Handbook" sought by the opponent, a period of three months is a long time to spend in obtaining a textbook whether or not it is a standard reference book on metallurgy in Australia as Mr. Pryor contended.   In fact, as this textbook was referred to in the HENSLER declaration served on 4 August, 1982 the opponent has in effect had five months within which to obtain it.   With regard to the further document sought namely, US Serial No. 704034, a period of three months seems to me to be a reasonable, and I would think an adequate, period within which to obtain that document irrespective of whether its associated US File Wrapper was also sought.
         Apart from stating that these documents took time to obtain, Mr. Cross volunteered no other explanation as to why copies of the additional material sought had not been obtained in the time available.   It is also worth noting that no approach had been made by the opponent to the applicant requesting them to supply copies of the documents sought.   In my view the opponent has failed to substantiate why its endeavours to obtain copies of additional material justifies the granting of an extension of time, or even why those endeavours constitute a genuine circumstance I need consider when considering the application.
         The second reason for the extension relates to the absence overseas of Dr. Parker.   It is worth noting that Dr. Parker is an independent person being a University lecturer.   Furthermore, Dr. Parker is considered by the opponent as a person skilled in the art of the opposed patent application, and was in fact the principal declarant for the opponent in support of the opposition.  As I understand it, the HENSLER declaration of the applicant directly answers matters in Dr. Parker's declaration.   It therefore seems reasonable to me, as the opponent argued, that Dr. Parker would be an appropriate person to consider and reply to the HENSLER declaration.   Mr. Pryor for the applicant conceded that this might be appropriate although he argued that an assessment of the points at issue by an independent witness may be more appropriate.   The opponent also contended that Dr. Parker, being an expert in the art and familiar with the subject matter of the opposed patent application, was also an appropriate person to consider the MORI declaration.
         The question I need to consider in deciding whether due to Dr. Parker's absence an extension of time is justified is whether in view of all the circumstances the opponent has established that it has had insufficient time to consider the applicant's evidence and prepare appropriate evidence‑in‑
reply and has been reasonably diligent in its actions.
         It seems clear enough to me that the opponent has experienced some inconvenience in considering and preparing its evidence‑in‑reply due to the unexpected absence overseas of its principal witness, Dr. Parker.   While the HENSLER declaration had been served and forwarded to Dr. Parker for consider‑
ation before his departure overseas, the MORI declaration was only served on the opponent after his departure.   Added to that is the fact that Dr. Parker was not available for nearly the entire 3 month period provided by Regulation 57.
         In the circumstances, it seems to me that the opponent had really two options available to it; namely, determine when Dr. Parker would again become available and prepare evidence‑in‑reply based on consultations with him when he so became available, or seek an alternative consultant who could consider the evidence and prepare an appropriate declaration.   According to Mr. Cross, diligent efforts were made to find out when Dr. Parker would be available again and be able to undertake further work in this matter, and the opponent expected from indications it had received that Dr. Parker would be available by the end of 1982.   The second option, seeking an alternative witness, was seen as presenting problems and delays since some time would have elapsed in locating a suitable witness who was skilled in the technology involved, in familiarizing the witness with the particular subject matter and the evidence already presented, and in preparing appropriate evidence‑in‑reply.   The indications were that merely locating a suitable alternative witness could have taken until the end of 1982 which would also have necessitated the opponent seeking an extension of time in which to serve evidence‑in‑reply.   Both options presented the opponent with difficulties in serving evidence in the time allowed.
         I am also mindful of the fact that the technology of a patent applic‑
ation under opposition or the nature of the evidence lodged in an opposition to that application may be such that a 3 month period in which to consider, prepare and serve evidence may be inadequate.   Whether that is the case here I cannot be certain since no direct submissions were made to me on that point.   Suffice it to say however, that both declarations submitted by the applicant are reasonably lengthy, and that the MORI declaration which according to the submissions relates to trial results would itself seem to require detailed and perhaps lengthy consideration.
         I am satisfied in view of all the circumstances of the case that the opponent has had insufficient time in which to serve evidence‑in‑reply.   Furthermore I have no reason to doubt that the opponent has been reasonably diligent in its endeavours to consider the applicant's evidence and to prepare and serve evidence‑in‑reply.   At the hearing Mr. Cross expressed the view that the time sought by the present application was expected to be sufficient to finalize evidence‑in‑reply, and unless unusual circumstances arise I see no reason why that should not be the case.   Accordingly I extend the time for serving evidence‑in‑reply to 5 April, 1983.
         On the question of costs, both parties sought a favourable award.   The general principle in respect of costs is that the award should follow the event, that is, they are awarded against the unsuccessful party unless there are mitigating circumstances.   Mr. Pryor submitted that due to the paucity of reasons put forward on the application for extension of time, costs should be in the applicant's favour.  It is true that the grounds given in the application were expanded on during the hearing by Mr. Cross but in general terms they reflect the basis of the circumstances and grounds on which I have decided to allow the extension.   I do not consider that the reasons given on the application are such that they would reasonably lead the applicant to doubt the intentions of the opponent in its efforts to serve evidence‑in‑reply.   I therefore consider it appropriate that costs should follow the event and I accordingly award costs against the applicant, Daido Metal Company Ltd.

(T.R. BRUHN)