Daniel Charles Underwood v Connolly Key Joint Pty Ltd

[1998] APO 39

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 681984 in the name of Daniel Charles Underwood

Title:          Concrete structures and related accessories

Action:          Application for extension of time under r.5.10(2)

Decision:          Issued            .

Abstract

An extension of time for the period of time sought to serve evidence-in-support is refused, but, a period of 5 working days from the date of this decision is granted so that any immediately available evidence may be served.

The time within which evidence-in-answer may be filed will commence at the expiry of 5 working days from the date of this decision.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 681984 by Daniel Charles Underwood and an opposition by Connolly Key Joint Pty Ltd under s.59 of the Patents Act 1990 and an application for an extension of time under r.5.10(2)

background

Australian patent application number 48188/96 was filed as a divisional application of patent application 23733/97 (666883) on 21 March 1996 by Daniel Charles Underwood.

The application was advertised accepted on 11 September 1997 and assigned the number 681984. 

A Notice of Opposition under s.59 of the Patents Act was filed on 11 December 1997 by Connolly Key Joint Pty Ltd (Connolly).

On 4 June 1998 Connolly filed an application for an extension of time for 3 months under r.5.10(2) to serve evidence in support.  Underwood objected to the extension on 22 June 1998 and the matter was set down for hearing in Canberra on 15 July 1998.

Underwood was represented by Mr Trevor Dredge of Intellpro, patent attorneys, Brisbane and Connolly by Mr J G Adams of Fisher Adams Kelly, patent attorneys, Brisbane.

Neither party was represented at the hearing and only Underwood provided written submissions.  I have only the application form from Connolly which gives the following reasons for the extension:

“1.Further time is required to complete the preparation, execution and service of Statutory Declaration(s) forming the Opponent’s Evidence-in-Support.

2.In addition, the Opponent is seeking settlement of the Opposition with the Applicant, and further time is required for negotiations in relation thereto to be undertaken.”

Decision

The time for serving evidence-in-support of an opposition is three months from the date of serving the statement of grounds and particulars under regulation 5.8.  This time may be extended under regulation 5.10:

(2)  The Commissioner may:
(a)  on the application of a party in the approved form; and
(b)  on such reasonable terms (if any) as the Commissioner specifies;
extend the time within which the party may take a step prescribed in this chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).

Regulation 5.10(5) provides:

(5)  The Commissioner must not ... grant an application under subregulation (2) ... unless the Commissioner:
     ...
(c)  ...

(i)gives the parties a reasonable opportunity to make representations concerning the application...; and

(ii)is reasonably satisfied that ... an extension of time or the serving of further evidence is appropriate in all the circumstances.

The law on extension of time provisions, and specifically the law on reg. 5.10 of the Patents Regulations 1991, has been considered and summarised by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. In both of these decisions it was stated that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. On the contrary it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case. Relevant aspects include:

(a)      Reasons provided on why an extension of time to lodge evidence-in- support is needed;
(b)      The public interest; and
(c)      The interests of the parties involved in the opposition.
Disadvantages to either the applicant or opponent are relevant considerations.

In the application for an extension of time Connolly provides two reasons for an extension of time, that is to complete the preparation, etc. of statutory declarations and time to seek a settlement of the opposition.

Underwood denies, in written submissions “that there are or have been any negotiations to settle the Opposition.  An effort by the opponent to open negotiations by letter ... was rejected immediately”.

I have nothing before me from Connolly providing reasons why evidence-in-support was delayed and why it could not have been served within the period provided by the Regulations.

A declaration, constituting a part of evidence-in-support, was served on the applicant on 13 July.  This suggests to me that there may be other evidence being prepared and but as yet unserved that may be immediately available for service.

Connolly has not, in my view, justified an extension of time, but under the circumstances the public interest is best served by a short extension of time to serve any immediately available evidence.

CONCLUSION

I refuse to grant an extension of time for the period sought to serve evidence-in-support, but, grant an extension of time, under Regulation 5.10(2), of 5 working days from the date of this decision in which to serve any immediately available evidence.

The time within which evidence-in-answer may be filed will commence at the expiry of 5 working days from the date of this decision.

COSTS

Costs in these proceedings normally follow the event.  I see no reason to vary this, consequently I award costs against Connolly.

Bob Sawyer
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Intellpro, Brisbane

Patent attorneys for the opponent   :  Fisher Adams Kelly, Brisbane