Dominion Mining Limited v Western Mining Corporation

official notice

decision of a delegate of the commissioner of patents

Application : No. 663525 in the name of DOMINION MINING LIMITED

Title: Activation of a Mineral Species

Action: Opposition by WESTERN MINING CORPORATION LIMITED and an objection to the grant of an application to serve further evidence.

Decision: Issued .
Abstract

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No 663525 by DOMINION MINING LIMITED, opposition thereto by WESTERN MINING CORPORATION LIMITED and an objection to the grant of an application to serve further evidence

background

Patent application 663525 has been opposed by a number of opponents including the above mentioned opponents. In addition amendments to the specification under section 104 have also been opposed and this matter is still unresolved.

However this decision is solely in relation to an application by Western Mining Corporation (afterwards referred to as WMC) for special leave to adduce further evidence in respect of the opposition to Patent Application no. 663525 (27182/92). The applicant Dominion Mining Limited has objected to the application.

Serving of evidence in support by WMC was completed on 12 July 1996 in the 3 month time frame with no extension needed. After a hearing, the applicant was allowed a second extension of time to serve evidence-in answer (the first extension being unopposed), the filing of the evidence-in-answer was completed on 27 June 1997. On 10 April 1997 the applicant proposed amendments to the specification. These were advertised accepted on 13 November 1997 and opposed on 11 February 1998. The filing of Evidence-in-Reply to the section 59 opposition is currently delayed pending resolution of the opposed section 104 amendments. As of 2 March 1998 the opponent has agreed to the section 59 opposition being deferred until the section 104 opposition is resolved

WMC sought leave to adduce further evidence on 27 October 1997. The applicant filed an objection to this on 25 November 1997. The further evidence sought to be adduced was actually filed on 1 December 1997.

The application to serve further evidence was heard in Canberra on 3 March 1998. WMC (the opponent) was represented by Mr David G. Clark of Griffith Hack, Sydney, who appeared in person. Dominion Mining Limited (the applicant) was represented by Mr Peter Capehorn of Wray and Associates who appeared by telephone.

THE APPLICATION TO SERVE FURTHER EVIDENCE

The application to serve further evidence clearly sets out the reasons for making the application namely:

The opponent’s actions in serving/filing their evidence-in -support within the prescribed period showed particular vigilance,
In order to do this they were not able to get publication dates of the cited non patent literature in statutory declaration form,
It is in the public interest that the present opposition is correctly determined on the substantive matters with the opponent being given fair and reasonable opportunity to establish publication dates,
Natural justice dictates that the opponent should have the right to present evidence of publication dates which should not protract proceedings or affect the case the applicant has to answer.

The letter also refers to an accompanying declaration which indicates the nature of the evidence and some of the difficulties in obtaining it. The accompanying declaration has been made by David Gerald Clark, a registered patent attorney with Griffith Hack. (I note that at the hearing Mr Capehorn states that this statutory declaration was never supplied to the applicant.)

SUBMISSIONS

Both parties provided oral submissions at the hearing. Mr Capehorn sent his written submissions to IP Australia by facsimile on the morning of the hearing, but they did not actually arrive prior to the hearing. Mr Clark supplied his written submissions after the hearing. In both instances the submissions were merely a transcript of what had been presented orally. Both attorneys agreed that I should have regard to them despite their lateness.

R.A.Melvin
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Wray & Associates, Perth
Patent attorneys for the opponent : Griffith Hack Sydney

Dominion Mining Limited, the applicant, had filed a patent application which was opposed by Western Mining Corporation Limited, the opponent. The dispute centred on the opponent's application for special leave to adduce further evidence in respect of the opposition to the patent application, an application which the applicant objected to. This case was heard by R.A. Melvin, a delegate of the Commissioner of Patents.

The legal issues before the court included whether the opponent's application for leave to adduce further evidence should be granted, and whether the opponent's evidence should be admitted. The opponent argued that their actions in serving their evidence-in-support within the prescribed period showed particular vigilance, and that it was in the public interest that the present opposition be correctly determined on the substantive matters with the opponent being given fair and reasonable opportunity to establish publication dates. The applicant, on the other hand, objected to the application, arguing that the opponent had ample time to obtain the evidence.

The court found that the opponent's actions in serving their evidence-in-support within the prescribed period showed particular vigilance, and that it was in the public interest that the present opposition be correctly determined on the substantive matters with the opponent being given fair and reasonable opportunity to establish publication dates. The court also found that natural justice dictated that the opponent should have the right to present evidence of publication dates, which should not protract proceedings or affect the case the applicant had to answer. Accordingly, the court granted the opponent's application for leave to adduce further evidence.

As a result of the court's decision, the opponent was granted leave to adduce further evidence in respect of the opposition to the patent application. This decision allowed the opponent to present evidence of publication dates, which would assist in determining the substantive matters of the opposition. The court's decision also ensured that natural justice was upheld, as the opponent was given a fair and reasonable opportunity to establish publication dates.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established