Dentsply International Inc. v. Bayer Aktiengesellschaft

[1986] APO 22

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 548207 by DENTSPLY INTERNATIONAL INC.

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In the Matter of an Application under Section 160 by BAYER AKTIENGESELLSCHAFT for an Extension of Time in Which to Lodge Notice of Opposition.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
        By a decision dated 5 June, 1986, I allowed BAYER AKTIENGESELLSCHAFT (Bayer) an extension of time of two months within which to lodge a notice of opposition, directed that evidence in support of the opposition was due within 3 months of the date of the decision, and awarded costs in favour of Bayer.  I also indicated that the reasons for this decision would issue later.  The following are those reasons.
Background
        Patent Application No. 548207 in the name of DENTSPLY INTERNATIONAL INC. (Dentsply) was advertised accepted in the Official Journal on 28 November, 1985.  Thus the three month period allowed by sub‑section 59(1) to lodge notice of opposition expired on 28 February, 1986.
        A notice of opposition was lodged on 8 April, 1986 by Bayer and was accompanied by an application under sub‑section 160(2) for an extension of time of two months within which to lodge the notice of opposition.  On 14 April, 1986, statutory declarations by James Gordon Siely and Norma Gleeson were lodged in support of the application for extension of time.  Dentsply gave

notice of objection to the extension of time and the matter was set down for hearing in Canberra on 29 May, 1986.
        Mr. J.G. Siely, patent attorney of Arthur S. Cave & Co., and Mr. P.F. Kildea, patent attorney, appeared for Bayer and Mr. W.L. Thomson, patent attorney, appeared for Dentsply.
Decision
        The extension of time has been applied for under sub‑section 160(2) of the Patents Act which reads as follows:

"160(2)Where, by reason of ‑

(a)an error or omission on the part of the person concerned or of his agent or attorney; or

(b)circumstances beyond the control of the person concerned,

an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step."

In my view, sub‑section 160(2) is available to extend the time limit set by sub‑section 59(1) as there is no indication in the latter sub‑section to the contrary nor is sub‑section 59(1) one of the sections listed in sub‑section 160(8) to which section 160 does not apply.  In deciding whether or not to grant an extension of time under sub‑section 160(2), the first consideration is whether or not the applicant for the extension of time has established that the failure to meet the time limit is due to either "an error or omission" or "circumstances beyond the control of the person concerned".  Once either of these tests has been met, the Commissioner then has a discretion to grant or refuse the extension of time.  In exercising his discretion, the Commissioner must take into account all relevant considerations.
        At the hearing, it was pointed out that the application for extension of time had been made under paragraph 160(2)(b) in spite of the fact that the accompanying evidence is directed to establishing that an error or omission on the part of a patent attorney occurred, i.e. the accompanying evidence would appear to support an application made under paragraph 160(2)(a).
        I am satisfied that the intention was to apply for an extension of time under paragraph 160(2)(a) not only because the accompanying evidence is clearly directed to a 160(2)(a) application but also because the fee of $110 accompanying the application is the correct amount for an application under paragraph 160(2)(a).  I note that the fee for an application under paragraph 160(2)(b) is $30.  At the hearing I was satisfied that the reference, in the application for extension of time, to paragraph 160(2)(b) was an obvious mistake and I accordingly directed that the application was to be treated as an application under section 160(2)(a).
        My next consideration is to decide whether or not there has been "an error or omission on the part of the person concerned or his ... attorney".
        The relevant part of the evidence lodged in support of Bayer's application appears to be paragraphs 5, 6, 7 and 8 of the statutory declaration by J.G. Siely which are as follows:

"5.I was on holidays in January, and returned to the office on Tuesday 28th January 1986.  On 28th January, or shortly thereafter, Norma Gleeson showed me the search card, a copy of which is exhibited to her Declaration, and asked whether I required a copy of the complete specification as accepted under application No. 548,207.  My answer was yes.  She promptly obtained the requested copy.

6.In a letter dated 4th February 1986, I reported to BAYER that application No. 75856/81 had been accepted.  I forwarded with this letter, a copy of the accepted specification.  However, through error, I failed to take note of the entries on the Australian Patent abridgement.  Instead, having noted that the final date appearing on the search card, 16th January 1986, was a Thursday, I mistakenly took this date to be the date of advertisement of the acceptance.  This erroneous information was incorporated into my letter of 4th February 1986.  A copy of this letter is annexed hereto as Exhibit JGS6.

7.With the benefit of hind‑sight, I am of course aware that none of the other dates entered on the search card are Thursdays.  I did not advert to this fact at the time my letter to BAYER, dated 4th February 1986 was being prepared. Instead, I merely made the error of concluding that the acceptance of the application was advertised in the Patent Office Journal of Thursday 16th January 1986.

8.In a telex dated 7th April 1986 received in our office on 8th April 1986, BAYER instructed us to file a Notice of Opposition against application No. 548,207.  Annexed hereto and marked Exhibit JGS7, is a copy of this telex.  I then noticed that the date of advertisement of acceptance of the application was not 16th January 1986 but, instead, was 28th November 1985.  Having realised the error, steps have immediately been taken to rectify the situation."

At the hearing a number of submissions were made by Mr. Thomson about whether the Official Journal or the Sub‑Office records were the proper place for the search conducted by Norma Gleeson to check the status of the patent application.  However, these submissions are irrelevant to the question of whether or not an error was made by Mr. Siely.
        I am satisfied that, for whatever reason, Mr. Siely made an error when he took the date of advertisement of acceptance to be 16 January, 1986 as he has declared in paragraph 6 above.  I am also satisfied that, had Mr. Siely realized the correct date of advertisement of acceptance and notified Bayer in his letter of 4 February, 1986 that the three month period to lodge notice of opposition would expire on 28 February, 1986, there would have been sufficient time to lodge a notice of opposition.  Thus, I am of the opinion that the application for extension of time satisfies paragraph 160(2)(a).
        I now turn to the question of whether or not the Commissioner should exercise his discretion to grant the extension of time.
        In resolving this question, I am of the opinion that the following matters are relevant and should be considered:

(a)whether there was any undue delay in making the application for extension of time,

(b)how the respective interests of the patent applicant, the potential opponent and the public would be affected, and

(c)whether consideration should be given to the seriousness of the opposition.

As already indicated, the period within which to lodge notice of opposition expired on 28 February, 1986 and the application for extension of time was lodged on 8 April, 1986.  However, it is evident from Mr. Siely's declaration, paragraph 8, that, once he realized his mistake on 7 April, 1986, Mr. Siely immediately lodged the application for extension of time.  Thus, I am satisfied that, once the error was realized, there was no undue delay in the lodging of the application for extension of time.
        If an extension of time is granted, the patent applicant would be adversely affected since the sealing of his patent would be delayed.  If an extension of time is not granted, the prospective opponent is deprived of his chance to prove to the Commissioner that a patent, if granted, would be invalid.  Further the public interest is not served in that an invalid patent may be granted which otherwise might not have been sealed had opposition proceeded.
        In considering what weight should be given to the interests of the respective parties involved and the public interest, I am guided by the words of Kitto J. in Kaiser Aluminium & Chemical Corporation v. Reynolds Metal Co. (1969) 120 CLR 136 at 143:

"In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be."

In my view the public interest and the interest of the prospective opponent outweigh the interest of the patent applicant.  Accordingly, I do not see sufficient reason for the Commissioner to refuse the extension of time on the grounds that the patent applicant's interests may be affected adversely.
        At the hearing, Mr. Siely referred to two Office decisions, viz. ICI v. Dow Chemical Co. 1 IPR 542 and Liquid Air Australia Ltd. v. Commonwealth Industrial Gases Ltd. 1 IPR 145 to support his submission that the applicant for the extension of time (and, therefore, the prospective opponent) does not have to prove that a serious opposition is intended. Nevertheless, Mr. Siely attempted to introduce further evidence at the hearing in the form of a statutory declaration by himself together with a list of patent specification numbers. He submitted that the patent numbers referred to prior art located by Bayer and that, notwithstanding his earlier submission that it was unnecessary to prove a serious opposition was intended, Bayer indeed was serious in its intention to oppose the patent application.
        The Office decisions, referred to above, suggest that the Commissioner does not have to consider whether a serious opposition is intended.  However it seems to me that, if, in the course of proceedings, it was made abundantly clear to me that the intended opposition was frivolous in nature, the Commissioner should not exercise his discretion to grant the extension of time. The opposition processes would be rendered inefficient if they were to be used for the sole purpose of delaying the sealing of valid patents by the lodging of groundless opposition.
        In the present circumstances, however, it is not readily apparent that a frivolous opposition is intended.  Indeed, as early at 8 February, 1984, Bayer instructed Arthur S. Cave & Co. to monitor the progress of the present application with a view to opposing the grant of a patent.  Further, Bayer instructed their attorneys to lodge notice of opposition within what they were led to believe was the three month time limit.  Thus, I am not of the opinion that the intended Bayer opposition is trivial in nature.  I have reached this conclusion without taking into account the list of patent numbers which was submitted as further evidence by Mr. Siely at the hearing and which is purported to be a list of prior art specifications.
        In summary, I find that an error was made by Bayer's patent attorney so that the conditions of paragraph 160(2)(a) have been met.  Further, I consider that the Commissioner should exercise his discretion to grant an extension of time from 28 February, 1986 to 28 April, 1986 within which to lodge a notice of opposition.

(A.J. EVANS)