Dupps Company v Stord Bartz A/S - [1989] APO 34

In the Matter of the Patents Act 1952
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In the Matter of Application No. 570199 by THE DUPPS COMPANY
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In the Matter of Objection by the Applicant to an Extension of Time under Regulations 55 and 82(b) to Serve Evidence‑in‑Support of Opposition by STORD BARTZ A/S.

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS:
Background
Application No. 12597/83 was lodged on 18 March 1983 by The Dupps Company for a patent for an invention relating to dry rendering of meat by‑products. The application is a Convention application based on an application lodged in the United States of America on 9 April 1982 and the applicant is resident in the United States of America. The Australian application was advertised as accepted on 10 March 1988 and given the Serial No. 570199. A notice of opposition was lodged on 9 June 1988 by Stord Bartz A/S, a Norwegian company manufacturing and dealing in rendering systems. Pursuant to Regulation 55, evidence‑in‑support was due to be served on the applicant by 9 September 1988, but the opponent applied for and was allowed four extensions of time under the Regulation, each extension being a period of three months.
On 13 September 1989 the opponent applied for a fifth extension of three months and because this application was lodged

after the period of the previously allowed fourth extension, it was accompanied by an application under Regulation 82(b) to extend the time by four days to apply for the extention under Regulation 55. In a letter to the Patent Office dated 9 October 1989 the applicant objected to the extension. The matter was heard in Canberra on 1 November 1989; the applicant was represented by Mr P. Kildea, patent attorney, and the opponent was represented by Mr H. Cumming, patent attorney.
         At the same hearing matters relating to application 555337 were also considered. That application, by Stord Bartz A/S, is being opposed by The Dupps Company, the latter objecting to a seventh extension of time for the former to serve evidence‑in‑ answer. A decision on that application is issued concurrent with this decision.
Regulation 82(b)
         The time within which applications for extensions of time are to be lodged may be extended "if the Commissioner is satisfied that special circumstances existed which prevented the application being made before that time ...".
         In the Regulation 82(b) application lodged on 13 September 1989 and in an accompanying declaration by Mr Cumming, the circumstances of late lodgement in the present case are explained; viz:

(i)The relevant file in the opponent's attorneys' office was placed with their data processing section to automatically bring up an attention date, but it was subsequently discovered that:
"our computer cannot at this stage handle deadlines in respect of patent oppositions and these must continue to be manually diaried by the attorney in charge."

(ii)Mr Cumming placed the file on the present application with the opposition file on application No. 555337 which had a deadline of 18 October to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1989] APO 34
Decision Date: 1 December 1989

CaseChat Overview and Summary

Dupps Company, an American corporation, sought a patent for a dry rendering process of meat by-products, while Stord Bartz A/S, a Norwegian company, opposed this patent application. The opposition proceedings were ongoing, with Stord Bartz seeking multiple extensions to serve its evidence-in-support of the opposition. The central issue was whether Stord Bartz should be granted a fifth extension of time to serve its evidence-in-support of the opposition. The court had to determine if special circumstances existed justifying the extension under Regulation 82(b) and if the extension would serve the interests of the patent applicant, the opponent, and the public under Regulation 55.

The court found that special circumstances existed, allowing Stord Bartz a four-day extension to lodge its fifth application for an extension under Regulation 55. However, the court denied the extension under Regulation 55, noting that Stord Bartz had not provided a good reason for the delay in serving evidence and had shown unreasonable delay in preparing its evidence-in-support. The court concluded that there was no serious opposition, and granting an extension would be detrimental to the interests of the applicant and the public.

The court awarded costs against Stord Bartz for the opposition proceedings. The decision underscored the importance of timely preparation and submission of evidence in patent opposition proceedings to avoid unnecessary delays and to ensure that the process serves the interests of all parties involved.

Orders