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 lodge evidence‑in‑

answer.(The evidence‑in‑support of the present opposition was due by 9 September 1989).  Mr Cumming explains:

"Through an error on my part, I put in mind 18 September 1989 as being the date in which to file an extension of time on application 570199."

The previous (fourth) extension of time to lodge evidence‑
in‑support was also lodged out of time and thus accompanied by an application under Regulation 82(b).  Also, in the opposition proceedings relating to application No. 555337, one application for extension of time for Stord Bartz to serve evidence‑in‑answer was lodged out of time.  Mr Kildea referred to these matters, submitting that Regulation 82(b) applications by Stord Bartz were becoming a "rather common occurrence" and that there were no special circumstances involved in the present application for extension.
However, in this matter I am guided by recent decisions of the Commissioner. In Genentech v Wellcome 11 IPR 401 an extension under Regulation 82(b) of nearly two months was allowed, it was established that the opponent's attorney failed to diarise a bring‑up date and the law relating to special circumstances was fully discussed. In conclusion, the Commissioner's delegate stated, at 405:

"Consequently, it seems to me that the errors made by Dr Horner's firm in failing to make appropriate diary entries do qualify as special circumstances."

In Mitsubishi v Asahi 10 IPR 591 an extension under Regulation 82(b) was allowed where the circumstances included an application for extension of time being left too long in a fees basket before being processed by a clerk in an attorney's office. In the present case the errors made in Mr Cumming's office are of a similar order to those made in the two cases referred to above, consequently I conclude that special circumstances exist in the present and I hereby allow Stord Bartz an extension of time of four days to 13 September 1989 in which to lodge its fifth application for extension under Regulation 55.
Regulation 55
In consideration of the matter of extension of time under Regulation 55 I am required to have regard to the respective interests of the patent applicant, the opponent and the public. The opponent carries the burden of establishing a case to justify the extension, there should be a good reason why the evidence has not been served within the time allowed under the Regulation, there should be some indication that there is a serious opposition and there should be no unreasonable delays. See Vangedal‑Nielsen v Commissioner of Patents and Gelphen Nominees 33 ALR 144 and Nautical Services Pty. Ltd. v Hitech Distillation (Australia) Pty. Ltd. 7 IPR 567.
         In the present case the opponent's grounds upon which its applications for extensions of time were made are summarized or cited as follows:
         For the first and second extensions the opponent merely requested further time "to obtain the supporting declarations and arrange execution of same".
         The application for the third extension, lodged 8 March 1989, referred to obtaining declarations from three experts, one being in New Zealand.  The statement of grounds concluded:

"This request for an extension we believe will be our last request as I can see no problems in having all our evidence prepared within the requested three months period."

The grounds stated on the application for the fourth extension, lodged 21 June 1989, read as follows:

"We have finally received a preliminary Declaration from the "expert' resident in New Zealand by facsimile on the 19th June 1989.  We are proceeding with amplification of this Declaration to provide it in its final format and have solely been delayed in the finalising of this Declaration by the heavy work commitment of the "expert" in New Zealand.  At the present we are still in dialogue with the two other "experts" to try to obtain collaborating Declarations."

The grounds stated on the application for the fifth extension, lodged 13 September 1989 and which has been objected to by The Dupps Company, read as follows:

"On 29 August 1989 our Patent Attorney was in Auckland, New Zealand having further discussions with Tissa Fernando of Flo‑Dry Technologies Limited, an expert resident in New Zealand.  Mr Fernando is further amplifying his declaration and it is hoped shortly to have this declaration ready for Filing."

Submissions
         At the hearing Mr Kildea suggested that the grounds stated on the applications for the first two extensions were inadequate and left some doubt as to whether "anything was done in 1988".  It is of some interest that the second extension was objected to by the applicant, a hearing had been set down to decide the matter but the applicant subsequently withdrew its objection.  Mr Kildea stated that this withdrawal was based on a written undertaking by the opponent to serve its evidence in a short amount of time; Mr Kildea showed me a copy of the undertaking, in the form of a letter from the opponent's attorney to the applicant's attorneys, dated 19 January 1989; the undertaking was:

"... to have the evidence in support filed by the 9th March 1989 subject only to unexpected circumstances arising.  I further undertake to provide draft declarations to you well ahead of the term March 9."

No explanation was provided to the applicant as to why this undertaking was not complied with.  Mr Kildea emphasised the statement in the third applicaton that "this ... will be our last request"; this statement subsequently being shown to be incorrect.  He also submitted that the statement "it is hoped shortly to have this declaration ready for filing", in the fifth application, gives no promise of the evidence being completed even with this extension.
         It was revealed at the hearing that a copy of a "final draft" of a declaration by Mr Fernando was sent to The Dupps Company's attorneys on 26 October 1989.  No copy thereof has been lodged with the Patent Office.  Mr Kildea alleged that the declaration "does not support a ground of opposition".  He stated that "the applicant questions the opponent's motive in opposition", that there is no indication that a serious opposition is foreshadowed and, because the inventions of applications 570199 and 555337 are substantially the same with prior claiming being a significant ground, that "we think it may be just a tit‑for‑tat opposition".  570199 has the earlier priority date.
         Mr Kildea also submitted that in a similar opposition between the two parties in New Zealand, relating to N.Z. application No. 203543, Stord Bartz served its evidence‑in‑support in time, in November 1988; and in this light it is not clear why it cannot complete its evidence‑in‑support in Australia.  He also pointed out that in its present fifth application for extension the opponent referred to the extension as being for "the period of acceptance"; i.e. Section 54(1B) instead of Regulation 55.  Mr Kildea concluded by suggesting that a general carelessness characterized preparation of the opponent's evidence.
Mr Cumming began his submissions by referring me to the judgements of the Federal Court and High Court respectively in the Vangedal Nielsen case, supra, and in Kaiser Aluminium & Chemical Corp. v The Reynolds Metal Co. (1969) 120 CLR 236. In the latter case the High Court decided to allow an extension of time in the public interest; the comments of Kitto J. at 143 have often been cited, viz:

"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."

Also with regard to the gathering of evidence outside Australia he referred me to the decision of the Registrar of Trade Marks in Marks v Spenser 7 IPR 176. Therein at 179 I note the Registrar's delegate stated:

"Re time taken for collection of evidence in Trade Mark Opposition I accept that difficulties in communication between parties will occur when both parties are outside Australia and in different parts of the world and when as in this case the evidence is to be collected in Australia."

Mr Cumming submitted that Stord Bartz was concerned about evidence lodged in this opposition since with the similarity of the inventions "one must kill the other".  He further stated:

"I have received instructions from Stord Bartz that the evidence‑in‑reply [evidence‑in‑answer] on the other opposition [555337] will take the form such that their patent will stand a good chance of self‑destruction."

He submitted that Stord Bartz's opposition is serious and as part of that submission he stated:

"It is not so much tit for tat but that if I can't have a patent for this invention, as it is the same invention, neither can you have a patent for this invention."

He also mentioned that it is likely that a patent will be granted on Stord Bartz's equivalent US application.
         Mr Cumming suggested that there has been some delay in preparation of the opponent's evidence‑in‑support because of its concern about self‑destruction; he stated:

"[Stord Bartz's] principals were waiting to a large extent for evidence that might be filed by The Dupps Company."

With regard to the proceedings in New Zealand, Mr Cumming submitted that The Dupps Company was currently "on extension of time to lodge evidence‑in‑reply" [evidence‑in‑answer] and that Stord Bartz was waiting for that evidence hoping that The Dupps Company may "self‑annilihate" its present Australian application with that evidence lodged in New Zealand.
         Mr Cumming referred to the opponent's efforts in gathering evidence‑in‑support.  Firstly he explained that the undertaking previously referred to could not be complied with because at that time the significance of the need for evidence from an expert familiar with the state of the meat rendering art in Australia was realized.  Secondly, he referred to the names of several potential experts and his attempts to obtain evidence from these people; though much of his effort in this regard seems to have been fruitless, Mr Fernando in New Zealand being the only person showing some response.  Mr Cumming "had difficulties in getting Mr Fernando to reply" which necessitated trips to New Zealand.  Mr Fernando recognized the similarity in the applicant's and the opponent's inventions and was having difficulty with being asked to declare that one invention was obvious and the other was not.  The "preliminary" declaration from Mr Fernando, received on 19 June 1989, was not satisfactory; this declaration has been "amplified" and returned to the declarant for execution.  It is a copy of this "amplified" or "final" draft of the unexecuted declaration which was sent to The Dupps Company's attorneys on 26 October 1989.
Decision
         In deciding whether Stord Bartz has established a case to justify a fifth extension of time I will first consider the matter of delay.
         I deduce that Stord Bartz has been in some state of uncertainty about its opposition in this case because of the counter‑opposition by The Dupps Company to application No. 555337.  This has led to delay.  For example, I have no evidence before me that any attempt was made to gather evidence during the initial three months allowed by Regulation 55 or in the six month period of the first two extensions.  Also, there has been delay due to Stord Bartz not taking any positive action in this case because it was waiting for The Dupps Company to lodge evidence in the New Zealand proceedings.
         If the opponent is now prepared to self‑destruct application No. 555337 to prevent The Dupps Company from obtaining grant of a patent on the present application, as suggested by Mr Cumming, it would be in the opponent's interest to serve evidence‑in‑support of the opposition without delay.  Yet recent delays are still evident.  In March 1989 experts were approached, a declaration was not received until June 1989, that declaration was returned to Mr Fernando in New Zealand for execution of an "amplified" version and several months later the amplified declaration still has not been executed.  I consider Mr Cumming's recent attempts to hurry Mr Fernando not to be a sufficient reason for me to decide that the delay is not unreasonable.  The opponent has had adequate time to obtain suitable declarations from its experts and, taking into account the total amount of time from 9 June 1988 when evidence‑in‑support first could have been served on the applicant, I conclude that the opponent's attitude has been dilatory and that there has been unreasonable delay.
         Stord Bartz's opposition in this case appears to be somewhat serious in the sense that it has a strong desire that The Dupps Company should not be granted a patent (Mr Cumming mentioned that Stord Bartz should have but somehow failed to lodge a PCT application with an earlier priority date than that of the present application); however I am bound to determine whether there is, in fact, a serious opposition which is not the same thing as a serious desire to oppose.  In this case I have no evidence before me of a serious opposition.  The opponent has not been able to obtain evidence from any expert resident in Australia and the one declaration which it has obtained is inadequate and has not been served as evidence. 
         I do not think that the opponent has provided a good reason why the evidence has not been served within the time allowed.  Over recent months for example the only reason seems to be that Mr Fernando is reluctant to execute the "amplified" declaration.  I do not think that this is a good reason.
         In the Kaiser Aluminium case referred to by Mr Cumming the opposition had been instigated, the evidence had been served and it was clearly apparent from the evidence that a serious opposition had been established.  The contentious issue was that of locus standi; the opponent failed to indicate locus standi in the notice of opposition, and this was the "failure in procedure" referred to by Kitto J.  The present circumstances can be distinguished since no evidence has been presented to establish a serious opposition.
The decision in the Marks v Spenser case I do not consider to be particularly relevant to the present case. The decision in Vangedal Nielsen was not followed in Marks v Spenser but the Registrar's delegate made a point of emphasising that different criteria are to be considered in extension of time matters relating to trade marks than those considered in matters relating to patents. In Baxter Travenol Laboratories Inc. v Cutter Laboratories Inc. 9 IPR 36 and in Viscount Plastic Products Pty. Ltd.'s Application (1980) 50 AOJP 2073 the Patent Office refused applications for extenson of time under Regulation 55. The circumstances in those cases are similar to those in the present case. In the Baxter v Cutter case for example, previous extensions had been allowed for a total period of twelve months, yet the opponent was still "reviewing" the prior art. The Commissioner's delegate decided that the opponent could have gathered some relevant prior art in the time available and that it was in the applicant's interest and in the public interest to conclude the matter. Similarly, in the present case I think that Stord Bartz has had adequate time to establish a serious opposition it has not been able to gather the evidence required and any further extension of time would cause further delay and would be detrimental to the interests of the applicant and the public.
Conclusion
         For the reasons given above I refuse to allow an extension of time under Regulation 55 to 9 December 1989 for Stord Bartz to serve evidence‑in‑support of its opposition.  The previous extension allowed was to 9 September 1989; no evidence has been served on the applicant so the provisions of sub‑regulation 61(2) are applicable.
         I award costs against Stord Bartz.

(J.I. WELSH)

Patent attorneys for the applicant: Phillips, Ormonde & Fitzpatrick
  Melbourne