Dominion Mining Ltd v MIM Holdings Ltd
[1997] APO 27
•11 June 1997
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: Application under Regulation 5.10(2) by DOMINION MINING LIMITED for an extension of time to serve evidence-in-answer; and objection to the application by M.I.M. HOLDINGS LIMITED and HIGHLANDS GOLD PROPERTIES PTY LTD.
Decision: Issued .
AbstractThe applicant cited the withdrawal of declarants and the need to obtain and brief further declarants as a major reason for needing the extension of time.
The extension of time to serve evidence-in-answer was granted. The applicant had made out a proper case to justify the need for the extension. The seriousness of the opposition, and the public interest also supported the granting of the extension of time.
The applicant also filed proposed amendments two months after the application for extension of time. It was evident between the parties that the proposed amendments were not likely to lead to resolution of the opposition. Consequently the fact that the applicant had filed proposed amendments was not a relevant factor in deciding whether to grant the extension of time.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 663525 by DOMINION MINING LIMITED, and an application, under Regulation 5.10(2), for an extension of time to serve evidence-in-answer; and objection thereto by M.I.M. HOLDINGS LIMITED and HIGHLANDS GOLD PROPERTIES PTY LTD.
background
This case is in relation to an application by Dominion Mining Limited (“the applicant”) for an extension of time of 3 months from 12 February 1997 to 12 May 1997 to serve evidence-in-answer in respect of the opposition to patent application no. 663525 (27182/92). M.I.M. Holdings Limited and Highlands Gold Properties Pty Limited (“the opponents”) have objected to the application for an extension of time, and the matter was set for hearing on 15th May 1997.
The events leading to this hearing are as follows:
| 12 October 1995 | Acceptance of patent application 663525 was advertised. |
| 12 January 1996 | Notice of opposition was filed by the opponents. |
| 10 April 1996 | Statement of grounds and particulars served by the opponents. |
| 10 July 1996 | Evidence-in-support was served in part by the opponents. |
| 12 August 1996 | Service of evidence-in-support was completed by the opponents after gaining an extension of time to serve evidence. |
| 12 November 96 | The applicant applied for an extension of time in which to serve its evidence-in-answer. This extension of time was granted unopposed. |
| 12 February 1997 | The applicant requested another extension of time in which to serve its evidence-in-answer. |
| 28 February 1997 | The opponents filed an objection to the extension of time and requested that the matter be set down for a hearing. |
| 10 April 1997 | The applicant filed a request to amend the patent specification. |
| 15 May 1997 | The hearing was held in relation to the request of 12 February 1997 and the objection of 28 February 1997. |
For the record, patent application 663525 has been opposed by the above-mentioned opponents, and also independently by Technological Resources Pty Ltd, and by Western Mining Corporation Limited.
At the hearing Mr Peter Caporn of Wray & Associates represented the applicant by telephone. Ms Alison McMillan (with Dr Ian de Jonge) of Cullen & Co. represented the opponents, M.I.M. Holdings Limited and Highlands Gold Properties Pty Ltd, also by telephone.
Statutory basis
According to regulation 5.10(5), before granting an extension of time under regulation 5.10(2), I must be reasonably satisfied that the extension is “appropriate in all the circumstances”. Decisions in Vangedal-Nielsen v Smith ((1980) 33 ALR 144), Ferocem Pty Ltd v The Commissioner of Patents (28 IPR 243), and Stena Rederi Aktiebolag v Danyard A/S (34 IPR 111), provide guidance regarding the factors to be considered. These factors are:-
whether the party requesting an extension of time has made out a proper case to justify the extension;
whether there is a serious opposition in train; and
considerations of the private interests of the parties, and of the public interest in ensuring that invalid patents are not granted and that the proceedings are not unnecessarily protracted.
Proper case to justify the extension
The onus rests with the party seeking an extension of time to justify the need for the extension with sufficient details of the circumstances and reasons for needing the extension.
The applicant’s reason for needing the extension primarily relates to problems the applicant has faced in retaining some of its declarants. Mr Caporn mentioned that independent declarants on whom the applicant was relying were subject to, or felt themselves subject to, a conflict with the present opponents as well as with the remaining two opponents. In particular the fifth and sixth declarants had withdrawn, one of them after being approached for consultancy work by one of the opponents. The application for extension of time and Mr Caporn’s submissions also mentioned that further time was also required to locate and brief a seventh declarant.
On the face of it I accept the withdrawal of declarants is a serious and frustrating problem. This would require the applicant to undertake duplicated effort to identify and brief new declarants and prepare new evidence-in-answer from them.
Ms McMillan challenged the need for the applicant to obtain evidence beyond that from the three or four declarants whom the applicant has been able to retain. I am not persuaded by this challenge. Mr Caporn commented that the nature of the industry, the technical expertise required in the field, and the environmental and commercial significance of the invention necessitated the use of more than three declarants to adequately present the applicant’s case.
I am prepared to accept the latter submission. The mining and mineral processing field is a competitive and technically complex one. In such a field it is difficult to find any one person who has complete expertise across the field. Consequently it is not appropriate for me to question the applicant’s choice of the number of declarants it is attempting to locate and brief.
I accept the withdrawal of declarants, at this stage of proceedings, would cause significant disruption to the applicant’s preparation of evidence-in-answer. This factor could entitle the applicant to an extension of time.
Ms McMillan also referred back to the first application, of 12 November 1996, for extension of time. Ms McMillan noted the applicant said the preparation of declarations from the first three declarants had commenced. Further time was required to complete those declarations and to receive an opinion from a fifth declarant, and to brief a sixth declarant. In the present application for extension, of 12 February 1997, Ms McMillan noted the applicant has not put forward any reasons as to why the declarations from the first three declarants had not been completed, nor what progress the applicant has made with these declarations. She further submitted the applicant has not provided any explanation as to why this evidence was not submitted in time. Ms McMillan relied on the Minproc Technology Pty Ltd v Commonwealth Scientific and Industrial Research Organisation (CSIRO) decision ((1996) AIPC 91-244) to suggest the applicant has not made a full and frank disclosure of why the extension was needed.
I agree with Ms McMillan’s point regarding the absence of information concerning the progress in preparing declarations from the first three declarants. This may suggest the applicant has not made a full and frank disclosure to support the need for an extension.
However I think the Minproc (supra) decision is of limited value in the present case. A full and frank disclosure is only needed to substantiate the reasons for the extension. The applicant does not appear to have encountered significant problems with the first three declarants. Instead the problems have arisen with later declarants. Consequently it is not necessary to give a full and frank disclosure regarding the progress being made with the first three declarants.
I acknowledge the submissions from both parties regarding the work commitments of in-house experts compared with external experts (Minproc (supra) case). In the present case however, there is insufficient material before me to establish the employment status of the applicant’s declarants. Furthermore this material would not be relevant to the primary consideration of the applicant’s problems in retaining declarants.
On balance the applicant has made sufficient disclosure to show it has encountered real difficulties which necessitate the need for the extension of time. The withdrawal of two declarants, at this stage of proceedings, and the difficulty in locating and briefing new declarants outweighs considerations regarding the adequacy of disclosure concerning the first three declarants and the progress in preparing declarations from them.
Seriousness of opposition
Mr Caporn asserted the opposition is serious. He cited the difficulties the applicant has faced in retaining declarants and the fact that there are three separate oppositions by companies of the calibre of the opponents.
Ms McMillan attested to the seriousness of the opposition but also stated the applicant has nothing to do with the seriousness of the opposition. She suggested the correct approach, when considering an extension for the applicant to serve evidence-in-answer, is whether the applicant is mounting a serious defence to the opposition. Ms McMillan relied on the S.D.S. Digger Tools Pty Ltd v Pasdonnay Pty Ltd case (unpublished decision on application 638571, dated 1st February 1995) to support this position.
I think the applicant is serious in its defence of the opposition. The pursuit of new declarants to replace those that have withdrawn, briefing the new declarants, and preparing new evidence-in-answer, attest to a serious undertaking by the applicant in its defence of the opposition. The actions of the applicant suggest the applicant is seriously attempting to avoid unnecessary protraction of the opposition proceedings.
Private and public interests
Mr Caporn mentioned the applicant’s interests would be best represented by being allowed to present all its evidence to balance the issues raised in the opponents’ evidence-in-support. On the face of it I think the applicant should be allowed further opportunity to present its case at this stage. The applicant’s need for the extension has largely arisen from circumstances beyond its control. A refusal of the extension would cause the applicant further detriment above that already suffered through the withdrawal of declarants.
Ms McMillan stated it was not in the opponents’ interests to delay proceedings as the opponents do not know where they stand. I accept the opponents could be affected by further protraction of proceedings if I grant the extension of time. However I do not think such protraction would have the same undue effect on the opponents as the effect on the applicant of a denial of the opportunity to properly present its case if I refused the extension.
Public interest considerations were addressed by Burchett J. in the Ferocem (supra) decision:
The determination of an application for an extension of time under Regulation 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned with application and opposition in question. There are also the public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office. But they also include, as Kitto J. pointed out in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 143, “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”.
The Kaiser Aluminium (supra) case states that one should deal with a serious opposition on its merits rather than shut it out because of a failure in procedure. While that case discusses the risk of shutting out the opponent, I think the same principles apply in respect to the risk of shutting out the applicant by denying a proper defence of the opposition. The S.D.S. Digger Tools (supra) case supports this position. That case notes it is in the public interest for the applicant to be able to defend its case for what might be a worthwhile invention rather than have the defence shut out because of a failure in procedure.
It is also against the public interest to grant an invalid patent and to unnecessarily delay opposition proceedings. Opponents, and particularly their statements of grounds and particulars and evidence-in-support, are an important source for reducing the risk of granting invalid patents. In this light one could suggest that the applicant’s evidence-in-answer has little effect on this public interest consideration. On the other hand it is equally against the public interest to deny the grant of a valid patent. This position means the applicant’s evidence-in-answer is as important to the public interest as the opponents’ evidence-in-support. I think this point carries more weight, at this stage of proceedings in the present case, than the likely delay of those proceedings.
Proposed amendments and directions
Both parties made submissions about the nature of the proposed amendments to the specification and the timing of the proposal. The opponents’ concerns are that the applicant is exploiting a loophole to delay the proceedings by filing proposed amendments, which appear to be trivial and may not be allowable. The applicant’s rationale for proposing amendments is to overcome the issues raised by the opponents in their opposition, and to seek a speedy resolution of the opposition.
I support the applicant’s desire for resolution of the opposition through amendment of the specification. The Stena Rederi (supra) and Orion-Yhtyma OY v Pickering (unpublished decision on application 663995, dated 24 April 1997) cases both also allude to the preference of resolving oppositions through amendments to the specification if possible.
Both of these cases dealt with the filing of proposed amendments during extension periods for serving evidence. In the former case the hearing officer allowed an extension of time to serve evidence-in-answer even though the need for the extension was not sufficiently justified by the applicant. The grounds for allowance were that the applicant had filed proposed amendments of a non-trivial nature which led to some uncertainty regarding the form of the claims of the specification. In the latter case an extension of time was also allowed to serve evidence-in-answer on the basis of the non-trivial nature of the proposed amendments and the possibility of the amendments leading to a final resolution of the opposition.
The present case differs somewhat from the Stena Rederi (supra) and Orion-Yhtyma (supra) cases. In these cases amendments were proposed, respectively, about one week before, and concurrently with, the second applications for extensions of time.
The present applicant attempted to initiate settlement proposals in January 1997 with the opponents regarding the amendments. However the proposed amendments were not filed with the office until 10th April 1997, two months after the second application for extension of time.
Furthermore the possibility of resolution of the opposition, by way of proposed amendments, is not at all clear in the present case. It was evident at the hearing that the parties remain in marked disagreement concerning the extent of the proposed amendments in being able to resolve the opposition.
I am also concerned at granting extensions of time merely in the hope that settlement of the opposition between the parties may possibly result from proposed amendments by the applicant. It would not be in the public interest to continually grant extensions of time on the basis of this possibility.
Therefore there is little justification to allow an extension based on the possibility that the parties will settle. Meanwhile the applicant faces a serious opposition which requires a diligent response by serving evidence-in-answer in a timely fashion. Consequently the applicant must apply at least an equal effort in finalising evidence-in-answer as is being expended on settlement proposals through proposed amendments. Given Mr Caporn’s assurance, made at the hearing, that this is indeed happening, and given the submissions regarding the pursuit of new declarants, I accept the applicant is being diligent in preparing evidence-in-answer.
Mr Caporn further raised the point that various proposed directions by the applicant and the office during late 1996 and early 1997 have resulted in an air of uncertainty over finalising of the evidence-in-answer. These proposed directions (which were not issued) related to the applicant’s desire to bring the times for serving evidence-in-answer in line for all three oppositions. The times were proposed to begin from 31st October 1996 when all evidence from all three opponents was completed.
I do not agree with Mr Caporn’s submission. There may have been some uncertainty in respect to times for serving evidence-in-answer for each opposition. On the other hand, at the time of the application for the extension (12th February 1997), six months had elapsed since the present opponents completed their evidence-in-support, and three-and-a half months had elapsed since all three opponents completed their evidence. Clearly the applicant has required extensions of time irrespective of whether the proposed directions would have issued.
I think the continuing need for further extensions, by the applicant, highlights the position that previous uncertainty regarding proposed and counter-proposed directions has not been seriously detrimental to the applicant.
Summary
On balance I find the extension of time is justified on the basis that a proper case has been made out by the applicant for the need for the extension. The seriousness of the opposition, and the public interest also supports the granting of the extension of time.
In this case I have not considered it relevant that the applicant has proposed amendments to the specification. It is evident that the parties remain in disagreement as to the likelihood of the proposed amendments leading to a resolution of the opposition.
On balance I am satisfied that the extension of time is appropriate in all the circumstances. I grant the applicant the extension of time to serve evidence-in-answer.
Costs
Both parties submitted that costs should follow the event. Ms McMillan also submitted there should be no award of costs if the applicant is successful. She relied on the Stena Rederi (supra) case. In that case there was no award of costs because of the lack of substantive information from the applicant to support the need for the extension, and due to the lateness in filing proposed amendments.
In reaching my conclusions in the present case, I have not given any weight to the fact that the applicant has filed proposed amendments. I have also found that the applicant has sufficiently justified the need for the extension.
I award costs against the opponents, M.I.M. Holdings Limited and Highlands Gold Properties Pty Limited.
M.G. Kraefft
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Wray & Associates, Perth.
Patent attorneys for the opponent: Cullen & Co., Brisbane.
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