Dynamic Data Systems Pty Limited v Ingenico International (Pacific) Pty Ltd
[1997] APO 39
•4 September 1997
official notice
decision of a delegate of the commissioner of patents
Petty Patent Applications : No. 669321 and 669322 in the name of Dynamic Data Systems Pty Limited
Title: Funds transaction device
Action: Applications under section 223 for extensions of time to file material in support of notices under section 28(1)
Decision: Issued .
Abstract
I am satisfied that there was an error in accordance with the provisions of section 223 of the Patents act.
Having decided that an error or omission has been made, I must decide whether it is appropriate to exercise my discretion to allow the requested extension of time. In a somewhat analogous situation, where an extension of time was sought to appose the grant of a standard patent application, it is accepted that the following considerations are relevant to the exercise of discretion:
whether a serious opposition is foreshadowed;
whether there has been any undue delay; and
the relative interests of the patent applicant, the prospective opponent and the public.
(see Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144.)
The principles listed in Vangedal-Nielsen v Smith (Commissioner of Patents) (supra) above are equally applicable to section 28 matters because it is important to ensure that:
the informant is serious in the section 28 matter;
there is no undue delay in finalising the section 28 proceedings; and
the relative interests of the parties, including the public are considered.
The extensions of time, in my view, have been justified and I grant an extension of time, to file further material in support of the section 28 notices, from 30 April 1997 to 30 July 1997 for petty patents 669321 and 669322.
In view of the amount of material filed in support of the section 28 notice, I allow 3 months from the date of this decision to file material in response to the section 28 notices.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Petty Patent Applications No. 669321 and 669322 in the name of DYNAMIC DATA SYSTEMS PTY LTD and notices under Section 28 by INGENICO INTERNATIONAL (PACIFIC) PTY LTD and an application under section 223 for an extension of time to file material in support of the Section 28 Notice.
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).
On 30 April 1997 Ingenico filed some of the material in support of their section 28 notices together with applications for extensions of time under section 223 to file further material.
The circumstances in which, and the grounds upon which, the applications were made are stated as follows:
“On 7 April the opponent (Ingenico) lodged a Notice under s 28(1) in connection with the above patent. The only documents lodged in support of the Notice was the specification filed in the Federal Court patent revocation proceedings commenced by the opponent. This was as a result of express advice given to us by the Patents Office on 4 April 1997 to the effect that no other documents were required at that time and that evidence could be filed after the Patentee responded.”
On 2 June 1997 Dynamic objected to the granting of the extension of time and the matter was set down for hearing in Canberra on 7 August 1997.
Dynamic was represented by Mr Glenn McGowan of Counsel and Mr Stephen Wilson of Griffith Hack, patent attorneys, Melbourne and Ingenico by Mr Justin Gleeson of Counsel and Mr Peter Silver of Clayton Utz, solicitors, Sydney.
The subject matter of the applications relates to funds transaction devices, in particular to those operated via a mobile telephone.
EVIDENCE
Statutory declarations were filed by Mr Peter Silver, solicitor of Clayton Utz. A declaration was filed on 30 April 1997 for each application under section 223 and another was filed and served on 6 August 1997.
DECISION
At the hearing counsel for Ingenico stated that the applications for extension of time were made under section 223(2)(a) of the Act and not section 223(1).
The legislation
Section 223.
Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
...
The time allowed for doing a relevant act may be extended, whether before or after that time has expired.
...
A person may, as prescribed, oppose the granting of the application
...In this section:
"relevant act" means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.
The provisions of s.223(2) are such that before the Commissioner can proceed to exercise discretionary power under the subsection, the existence of a relevant error or omission must be established. I have said relevant error or omission because the subsection requires a causal link between the error or omission and the fact that the "relevant act" was not done within a "certain time". The provisions of s.223(2) correspond closely to the provisions of s.160(2) of the repealed Patents Act 1952 and I believe that precedent under the former act is equally relevant to the current provisions. Decided cases involving the former s. 160 provisions such as Kimberly-Clark Ltd v. Commissioner of Patents 13 IPR 569 and Danby Pty Ltd v. Commissioner of Patents 12 IPR 151 discuss the causal link aspect.
Extension of time
I have evidence before me, in the form of two statutory declarations from Peter Silver, as follows:
Declarations dated 30 April:
“3. On 4 April 1997, 1 had a telephone conversation with a female employee of the Patent Office in Canberra, ACT, which, after discussing various issues concerning section 28(1) notices, continued in words to the following effect:
I said: "We are in a civil action and our evidence is not ready.”
She said: "OK."
4. As a result of the conversation set forth in paragraph 3 1 believed that it was not necessary to file evidence in support along with the Notice in terms of section 28(1) of the Patents Act 1990 but that such evidence could be filed at a later date, namely after the patentee had responded to the Notice.
5. A copy of my file note of this conversation is annexed and marked with the letter marked “A”.”
A translation of the file note is included in the declaration of 6 August as follows:
“1. Is there a prescribed form for lodging section 28 notices?
No specific form
Write covering letter
Supply evidence if you got any
2. What kind of detail must be included? - Customary to set out all evidence.
3. Service on Petty Patentee?
Inform the Petty Patentee that you have filed the notice.
Section 28 - for reasons.
No service on the patentee. *They will serve everything.”
The declaration of the 6 August includes the following paragraphs:
“6. In late March 1997 I read section 28 in order to ascertain what had to be lodged with the Patents Office in the Opposition Proceedings. The section led me to read regulation 2.7 of the Patents Regulations. When I read regulation 2.7 I did not understand the word "document" to mean all the evidence on which reliance would be placed in the Opposition Proceedings. I formed the view that regulation 2.7 required 2 copies of the Petty Patents to be attached to the Notice.
7. I discussed the matter with John Collins and we agreed that I should telephone the Patents Office to clarify the matter.
8. On 4 April 1997 I telephoned the Patents Office and the telephone conversation referred to in paragraph 3 of my Earlier Statutory Declaration ensued. I set out below a more comprehensive description of the telephone conversation:
Peter Silver: “My client wants to oppose the extension of term of 2 petty patents. Is there a prescribed form for lodging section 28 Notices?
Employee: “There is no specific form, it is usually done with a covering letter and you can supply evidence if you have got any”
Peter Silver: “What kind of details must be included; is it merely a statement that the patents do not comply with the Act?".
Employee: “It is customary to set out all the evidence with the Notice".
Peter Silver: "We are in a civil action and our evidence is not ready".
Employee: "Ok".9. I understood from this conversation that it did not matter that Ingenico’s evidence was not ready to be attached, and that there was no requirement that the evidence had to be attached to the section 28 Notice. I annex hereto marked "C” a transcript of the telephone note of this conversation, the handwritten version of which is attached as annexure "A" to my earlier Statutory Declaration,
10. I then related the call to John Collins in the above terms and I prepared the Notices in terms of section 28(1) of the Act which were, duly lodged at the Patents Office on 7 April 1997, well within the time period stipulated by the Act, I lodged the Notice well in time as a matter of caution because I did not want anything to go wrong with the Opposition Proceedings.
11. Had I been informed that all evidence had to be filed with the section 28(1) Notice, or had I independently arrived at this conclusion, I would have taken those steps necessary to file whatever evidence was obtainable within the time stipulated by the Act. As it happened, I believed that it was unnecessary to accelerate this process so that all the evidence could be filed by the end of April.
12. John Collins has informed me and I verily believe that about 3pm on 30 April 1997 he had a discussion with David Webber, a partner at Davies Collison Cave, Patent & Trade mark Attorneys, during which Mr Webber informed him that in his view a section 28(1) Notice had to be accompanied by all relevant evidence. Mr Collins then made arrangements for those relevant documents in the possession of Clayton Utz to be copied and immediately lodged with the Patents Office in duplicate. I attach as annexure “D" hereto a list of the documents that were lodged on 30 April 1997.”
At the hearing, Ingenico said they were not aware of a Patent Office decision, Applications by Yamazaki Mazak Corporation 24 IPR 321, which sets out the practice for filing section 28 notices.
Dynamic objected to the late service of the declaration of 6 August on the basis that they did not have sufficient time to consider it. While there is a reasonable amount of material presented as evidence (100-150 pages) only a few pages are relevant to the current proceedings. Consideration of this evidence should not have placed an undue burden on Dynamic. However, I will have regard to the late service of evidence in my consideration of costs.
Ingenico submited that
“there was an error or omission by the Attorney for Ingenico. A view was taken that s. 28 and the regulations did not require the supporting evidence to be lodged within the 11 month period. That view was based on a reading of these provisions together with a conversation with an officer from the Patent Office. On the assumption now adopted, that view was in error. As a consequence of that error, Ingenico did not gather and submit all of its evidence prior to 30 April.”
Dynamic submits that
"Error or omission" has been held not to include a deliberate policy (Re Weir Pumps Ltd and Commissioner of Patents and Stork Pompen BV (1988) 13 IPR 163 Federal AAT per Deputy President C J Bannon QC).
It was never the intention of Ingenico to lodge the evidence with its s.28 notice (see Kimberly-Clark supra at p.579) albeit on a claimed misunderstanding of what was expected of it. The failure to meet the deadline must also be causally linked to the error or omission relied on (Kimberly-Clark supra at p.580). That has not been done here. What happened here was, at best, a self-induced misapprehension, not an error or omission. Silver heard what he wanted to hear, or formed his conclusions disregarding what was said, or simply was too lazy or incompetent to work it out for himself.
Whichever analysis is correct, no error or omission is involved. And even if it was a relevant error or omission it has not been demonstrated to have been the operative cause of the failure to act in time. It has not been asserted one way or the other that Ingenico could have met the deadline if Silver had formed a different view on 4th April - maybe, maybe not. But without evidence about it, the causal link has not been demonstrated as it must be.”
I have no evidence to establish the claims of Dynamic. The evidence, in my view, establishes a chain of causation through the actions of Mr Silver which involves an error on his part. I am satisfied that there was an error on Mr Silver’s part resulting from the conclusions he drew from a conversation with a Patent office employee and from his reading of the Patents Act and Regulations.
Having decided that an error or omission has been made, I must now decide whether it is appropriate to exercise my discretion to allow the requested extension of time. In a somewhat analogous situation, where an extension of time was sought to appose the grant of a standard patent application, it is accepted that the following considerations are relevant to the exercise of discretion:
whether a serious opposition is foreshadowed;
whether there has been any undue delay; and
the relative interests of the patent applicant, the prospective opponent and the public.
(see Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144.)
Although Vangedal-Nielsen v Smith (Commissioner of Patents) (supra) deals with a standard patent I think the principles listed above are equally applicable to section 28 matters because it is important to ensure that:
the informant is serious in the section 28 matter;
there is no undue delay in finalising the section 28 proceedings; and
the relative interests of the parties, including the public are considered.
Whether the informant is serious in the section 28 matter
On realising their error, on the afternoon of the last day of the 11 month period for filing material in support of a section 28 notice, Ingenico “made arrangements for those relevant documents in the possession of Clayton Utz to be immediately copied and lodged with the Patent office in duplicate”. The further material in support of the section 28 notice has been filed.
I am satisfied that Ingenico is serious in their pursuit of the section 28 matter.
Whether there has been any undue delay
Ingenico filed the applications for an extension of time under section 223 on the final day of the 11 month period.
I do not think there was undue delay.
The relative interests of the petty patentee, the prospective informant and the public
In a letter filed on 2 May, Dynamic says:
“As is apparent from the notices and information supporting them, the issue of validity and infringement of the above petty patents is now before the Federal Court. We expect the Federal Court will shortly set a time table for lodgement of evidence in respect of the Court proceedings and we would appreciate advice from the Patent office as to whether the Patent office will allow a date for lodgement of the patentee’s Evidence in Answer to the section 28 notices, which is the same as that set out by the Federal Court for service of evidence in the Court proceedings.
If the Patent office prefers to maintain the existing deadline of 16 July 1997, we expect it will be necessary for the patentee to request at least one three month extension of time for service of its Evidence in Answer to the section 28 notices. This is because of the large number of documents and issues raised in the section 28 notices and also in view of the fact that we have been informed that amendments will shortly be made to particulars filed in the Court proceedings and this may alter the nature of evidence which is required in response to the section 28 notices.”
There is nothing before me to suggest undue prejudice against Dynamic if the extension of time is allowed. The content of the letter of 2 May suggests that Dynamic would not be unduly prejudiced if the extensions of time were to be granted.. In this case the public interest overtakes the interests of the petty patentee in this matter. The informant has demonstrated that it is serious in its pursuit of the section 28 matter and the public interest involves establishing whether the petty patents are or are not invalid.
It is clearly in the informant’s interests for the section 28 proceeding to go ahead.
CONCLUSION
The extensions of time, in my view, have been justified and I grant an extension of time, to file further material in support of the section 28 notices, from 30 April 1997 to 30 July 1997 for patents 669321 and 669322.
In view of the amount of material filed in support of the section 28 notice, I allow 3 months from the date of this decision to file material in response to the section 28 notices.
COSTS
I am sympathetic to Dynamic’s objection to the late service of the second statutory declaration by Peter Silver. It was served approximately two months after the first statutory declaration was filed and no reasons given for the late filing. An earlier service of the second declaration would have allowed a longer consideration of the matter by Dynamic and may have made the hearing unnecessary.
Consequently I award costs against Ingenico.
»Bob Sawyer
Delegate of the Commissioner of Patents
Patent attorneys for the petty patentee : Griffith Hack, Melbourne
Solicitors for the opponent : Clayton Utz, Sydney
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