Dynamic Data Systems Pty Limited v Ingenico International (Pacific) Pty Ltd

[1998] APO 60

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Petty Patents  :          No. 669321 and 669322 in the name of Dynamic Data Systems Pty Limited

Title:          Funds transaction device

Action:           Notices under Section 28 by Ingenico International (Pacific) Pty Ltd and an application by the Patentee for further time in which to file evidence in response.

Decision:          Issued            .

Abstract

Reasons for delay were not adequately explained and progress of Federal Court proceedings did not justify further delay in the matter before the Commissioner. Giving the Patentee the opportunity to avoid being shut out entirely, 14 days were allowed from the date of the decision for it to file evidence in response.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patents No. 669321 and 669322 in the name of Dynamic Data Systems Pty Ltd, notices under Section 28 by Ingenico International (Pacific) Pty Ltd and an application by the Patentee for further time in which to file evidence in response.

background

Australian patent applications 47933/96 and 47934/96 were filed as petty patent applications on 7 March 1996 by Dynamic Data Systems Pty Limited (Dynamic).  They are both divisional applications of application number 66417/94.

The applications were sealed on 30 May 1996 and assigned the numbers 669321 and 669322 respectively.

Notices under section 28 were filed by Ingenico International (Pacific) Pty Ltd (Ingenico) on 10 April 1997 together with notification of invalidity proceedings in the Federal Court (NG763/96). Applications for extension of the terms of the petty patents were filed on 17 April 1997.

A delegate of the Commissioner in a decision dated 4 September 1997 gave Ingenico an extension of time under Section 223 up to 30 July 1997 to file material supporting the Section 28 Notices. The time set initially for evidence in response ended on 5 December 1997 but three subsequent requests for further time to 5 September 1998 were allowed. On 2 September Dynamic sought a further extension of one month to 5 October and this was opposed by Ingenico who requested a hearing on the matter, subsequently set down for 14 October. Dynamic on 2 October filed a further request for time to file evidence in response to 5 November 1998.

Dynamic was represented by Mr Stephen Wilson of Griffith Hack, patent attorneys, Melbourne and Ingenico by Mr David Catterns QC, both by telephone.

DECISION

The time period in which a Patentee may respond to a Notice filed under Section 28 is not prescribed in the Patents Act or Regulations. It is a matter entirely within the discretion of the Commissioner, acting of course within the principles of natural justice and procedural fairness.

However, the Commissioner's discretion is essentially exercised in the same way as it might be under Regulation 5.10 and the law as it applies to that regulation is also generally relevant to the present matter. In this regard I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. From these decisions it is clear that the Commissioner must give genuine and proper consideration to all relevant circumstances and that his discretion cannot be reduced to an imperative compliance with particular requirements. Also while the Commissioner, before allowing an extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension, the absence of a satisfactory explanation will not preclude an extension of time if it is appropriate in the circumstances. I do not accept in this regard Mr Catterns' submission that the principles espoused by Burchett J in Ferocem are excluded on the facts of the case.

Relevant considerations will include the varied interests of the parties and also the public interest which may be much more significant in considering the extension of term of a petty patent that it would be in normal opposition proceedings. For this reason the Commissioner normally expects matters under Sections 28 and 69 to be resolved much more expeditiously and the time limits set by the Commissioner tend to reflect this.

Turning to the present request, the reasons given for this and previous extensions of time are in summary:

5 December - 5 March           Evidence in support includes large number documents and allegations of prior use. Expert witnesses being briefed and further time required to receive further information and to prepare and file declarations.

5 March - 5 June  "Further time is required in which to obtain responses from expert witnesses, formulate declarations or affidavits and lodge them in the Patent Office. We expect to be able to finalise evidence in response to the section 28 notices within the time limit requested above."

5 June - 5 September             "Evidence from expert witnesses have now been obtained and three declarations are in an advanced state of preparation." Further and better particulars sought in the Federal Court proceedings and this information is required before the declarations are completed. The proceedings overlap and the lack of information in one may prejudice the preparation of evidence in the other.

"The further time requested is to enable finalisation of the three declarations be the patentee's expert witnesses, time to have those declarations finally considered by the deponents and for the declarations to be executed and filed and served in these proceedings."

5 September - 5 October        Extension to finalise and serve evidence. The evidence "comprises many allegations of prior use of equipment in Australia. In view of the nature of the evidence a considerable amount of time is necessary in discussing those allegations with expert witnesses, investigating the various allegations and preparing appropriate evidence in answer." The evidence is the same in both proceedings and the parties have agreed to an extension to 10 October (2 October according to Ingenico) in the Federal Court proceedings.

5 October - 5 November        "The reason for the extension is the same as for the previous extension"

At the hearing Mr Wilson indicated that the evidence was still not completed and that he did not know when it may be ready to file. He explained that he had not been responsible for the preparation of the evidence and that as the Patentee was in the process of appointing new solicitors for the court matter there was some uncertainty at the moment. Mr Wilson foreshadowed a request for additional time in the Federal Court also.

The reasons given for the extension and the delays are in my mind clearly inadequate. The problems experienced in relation to the nature of the evidence are not at all clear and three declarations are said in early June to be in an "advanced state of preparation" but insufficient explanation has been given for why they have not yet been served. Indeed, each subsequent request has foreshadowed the imminent filing of the evidence and little progress appears to have been made.

The delay in providing evidence has also been linked to some degree to the progress of invalidity proceedings before the Federal Court. While the need to simultaneously prepare evidence for court proceedings may be a factor that the Commissioner ought take into account, those proceeding are independent and do not automatically justify delays in separate proceedings before the Commissioner. A discussion of the competing interests that apply in the case of co-pending proceedings can be found in Abb Engineering Construction Pty Ltd v A. Goninan & Co Limited (Unreported Patent Office decision in relation to patent application 657639, 21/08/98).

I cannot agree with Mr Wilson's suggestion that it was only the interests of the patentee that could be prejudiced in granting the extension of time. The public interest is certainly in favour of the parties having reasonable opportunity to prepare their case but it is also to a large degree in seeing matters before the Commissioner pursued diligently and for the early resolution of the status of the petty patents. The Federal Court action may to some degree hang over the present proceedings but it is wrong to suggest that an early consideration by the Commissioner will not work in the public interest. See in this regard Ferocem v High Tech Auto Tools (1993) 29 IPR 144. Given the time that has already elapsed and the long delay that may well occur before the Federal Court action is resolved I believe the public interest is weighed heavily against an extension of time. The Informant in this case has permitted the Patentee a significant amount of additional time before objecting and now seeks determination of the matter. This is not unreasonable under the principle that "someone who brings a legitimate, genuinely arguable claim to the Court is entitled to have that claim heard as soon as the Court can conveniently arrange it, consistently with the demands of other litigants" per F.A. Faulding & Company Ltd v Bristol-Myers Squibb Co., 40 IPR 511.

Taking all circumstances into consideration I believe it is appropriate to allow Dynamic a relatively short period of time such that it may finalise and serve whatever of the evidence is at hand. This finding is consistent with the Ferocem decision, supra, and while it may be seen as effectively granting the majority of the extension sought, it merely offers the Patentee an opportunity to avoid being shut out entirely. The Patentee has had more than fourteen months to respond to the Informant's evidence and given that nothing in response has been filed or appears likely to be in the foreseeable future the Commissioner's indulgence cannot be extended any further. Furthermore, a change of the Patentee's solicitors in the Federal Court proceedings is of limited import to the present action and the possibility of further delay in those proceedings tends to suggest that the Commissioner should pursue an early resolution of the extensions of term rather than entertain further delay.

Consequently I grant Dynamic a period of 14 days from the date of this decision in which to file evidence in response to the Section 28 Notices.

CONCLUSION

I find that the extension of sought is not justified in its entirety but I allow the Patentee 14 days from the date of this decision in which to file evidence in response to the Section 28 Notices.

COSTS

I award costs against Dynamic Data Systems Pty Ltd.

»Philip Spann
Delegate of the Commissioner of Patents

Patent attorneys for the patentee:  Griffith Hack, Melbourne

Solicitors for the informant:  Clayton Utz, Sydney