Email Limited v Stokes (Australasia) Ltd

[1993] APO 17

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 626359 by EMAIL LIMITED

Title:    Water Heater Element Assembly

Action: Application for an extension of time to file a notice of opposition under Section 59(1) of the Patents Act 1952 by STOKES (AUSTRALASIA) LTD

Decision:    Issued            .  Extension of time refused.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 626359 by EMAIL LIMITED and an application for an extension of time to file a notice of opposition by STOKES (AUSTRALASIA) LIMITED under subsection 59(1) of the Patents Act 1952.

background

Patent Application no. 626359 in the name of Email Limited (EMAIL) was lodged under the Patents Act 1952, and was advertised accepted on 30 July 1992.

Application no.626359 broadly relates to an electrically insulating gasket for a water heater element assembly.

Hermetic Ltd (HERMETIC) filed a notice of opposition to the application on 30 October 1992.

Stokes (Australasia) Limited (STOKES) filed a document which requested an extension of time to 30 January 1993 to file a notice of opposition on 28 September 1992. The document requested an extension of time under regulation 5.10(2) of the Patents Act 1990.

The Office acknowledged receipt of the document on 2 October 1992, and asked EMAIL if it wished to object to the extension of time.  EMAIL filed an objection and STOKES was informed of the objection on 20 October 1992.

A letter from the Office dated 23 October 1992 advised STOKES a request for an extension of time to lodge notice of opposition under regulation 5.10(2) of the Patents Act 1990 was not applicable. This letter also stated as follows:

"You will need to file a substitute request for extension of time under section 59(1)."

STOKES filed a substitute document on 2 November 1992  but this document was identical to the one filed on 28 September 1992.  STOKES filed another document on 2 December 1992 and explained this document was filed because "a typographical error" was found in the substitute document.  These documents also requested an extension of time until 30 January 1993.

The matter was set down for hearing in Canberra on 25 November 1992.  Before the date of the hearing both EMAIL(represented by patent attorneys Halford & Co, Sydney) and STOKES( represented by patent attorneys Carter Smith and Beadle, Melbourne) stated they did not wish to appear and provided written submissions.

circumstances and grounds

The circumstances and grounds given in the documents filed on 28 September, 2 November and 2 December 1992 are identical and are as follows:

"We have only recently received from our Patent Attorneys a considered opinion concerning the scope of the claims of the above Patent Application.  Our Attorneys advise us that while the claims of the application appear to be open to a valid objection, suitable prior art searches and other consideration will need to be given to the application before a positive conclusion can be reached one way or the other.  We therefore request an extension of time within which to conduct suitable searches and also to make an approach to the Applicant with a view to encouraging them to amend their application in a manner which would remove any need for our company to oppose the application."

SUBMISSIONS

The written submission filed by STOKES on 23 October 1992 may be summarised as follows:

1.The Patents Act 1952 clearly provides for the grant of an extension of time for lodgement of Notice of Opposition. EMAIL has not provided any good reason for its objection to the application for extension of time.

2.STOKES is genuinely interested in determining whether or not they should oppose the present application.  An extension of time has been requested since the applicant does not wish to lodge notice of opposition, without first determining the availability of suitable evidence in support of the likely grounds of opposition.

3.Searches of the patent literature are presently underway, but since the applicant's invention is extremely basic and simple in nature, some difficulty is being experienced in locating suitable prior art.

4.Enquiries are also under way to determine the common general knowledge in the art, and since these enquiries involve contacting numerous persons engaged in the art for information concerning the common general knowledge, further time will be required to complete those enquiries.

The written submissions filed by EMAIL on 24 November 1992 can be summarised as follows:

1.The application for extension of time specifies Regulation 5.10(2). This regulation explicitly excludes an extension of time for filing of a Notice of Opposition. The extension should have been sought under Section 59(1) of the 1952 Act. The submission then refers to the decision in the case of CSIRO v HBH Technological Industries Pty. Ltd((1992) AIPC 90-878).

2.There is no statement supporting the locus standii of the prospective opponent.

3.The grounds stated in the application for the extension of time do not fulfil the requirements for exercise of the discretion set out in the Kent-Moore decision(Kent-Moore Corporation v Environmental Products Amalgamated Pty. Ltd. (1992) AIPC 90-915). For example it is not clear when the opinion concerning the scope of the claims was received by STOKES, nor when a novelty search was initiated.

4.If the invention is so basic and simple in nature it should be easy to obtain instances of its anticipation.  The extension of time seeks time for the purpose of a fishing expedition.

5.Implicit in STOKES' submissions is an attempt to extend the time for filing the statement of grounds and particulars or for filing evidence in support.  This is contrary to the conduct of oppositions discussed in the Kent-Moore case.

The submissions also referred to other relevant cases including Shell Internationale Research Maatschappij N.V.(50 AOJP page 968), United States Surgical Corp.(52 AOJP page 990) and Vangedal-Nielsen and Others v Smith (Commissioner of Patents) and Another(33 ALR 144).

DECISION ON DOCUMENT

The documents filed by STOKES state their purpose is to request an extension of time to file a notice of opposition to application no.626359. According to section 234(3) of the Patents Act 1990 the opposition procedures for the present application are governed by section 59(1) of the Patents Act 1952. Thus the time for filing a notice of opposition to application no.626359 may be extended under subsection 59(1) of the Patent Act 1952 or subsection 223(2) of the Patents Act 1990.

The document filed on 2 December 1992 requests an extension of time under subsection 59(1) of the Patents Act 1952 but it was not filed within the 3 month period specified in this subsection. STOKES did not file any evidence about the typographical error in the earlier document. The document filed on 2 November 1992 refers to regulation 5.10(2) and it was not filed within the 3 month period specified in subsection 59(1). The document filed on 28 September 1992 was filed within the 3 month period specified in subsection 59(1) but it requests an extension of time under regulation 5.10(2).

I consider STOKES may have intended these documents to request an extension of time to file a notice of opposition to application no.626359 under subsection 59(1) of the Patents Act 1952 or subsection 223(2) of the Patents Act 1990.

According to Office practice set out in recent decisions I have to consider whether any of the documents:

-contain sufficient information to indicate it was seeking an extension of time under one of the above subsections (Newbury v Sutherland (unreported Patent Office decision of 9 December 1991 concerning patent application number 602930), or

-contain numerous deficiencies which make it difficult to construe the purpose of the document (CSIRO v HBH Technological Industries Pty. Ltd. (1992) AIPC 90-878)

The purpose of the documents may be to request an extension of time under subsection 223(2). But I consider the documents do not describe the kind of circumstances usually found in a request to extend the time under subsection 223(2).

I also consider there are circumstances apart from the document itself which suggest the purpose of these documents is not to request an extension of time under subsection223(2). For example I note STOKES did not file a notice of opposition with any of the documents. Nor did it file a declaration which sets out the grounds on which the application is made (regulation 22.11(1)). And the letters which accompanied the documents do not state a declaration under regulation 22.11 will be filed in the future. Therefore I am satisfied the purpose of the documents was not to request an extension of time under subsection 223(2).

The purpose of the documents may be to request an extension of time under subsection 59(1). In this case the document filed on 28 September 1992 is the only document which I have to consider because it is the only document which was filed within the period specified in subsection 59(1). I consider this document describes the kind of circumstances usually found in a request to extend the time under subsection 59(1).

But the document requests an extension of time to file a notice of opposition under regulation 5.10(2) of the Patents Act 1990. I think it is apparent the reference to regulation 5.10(2) is wrong because this regulation states it does not apply to extensions of time for filing a notice of opposition. And I think the circumstances which I have described above indicate the document is requesting an extension of time under subsection 59(1).

Thus I consider the document filed on 28 September 1992 does not contain numerous deficiencies which make it difficult to construe its purpose. But I think the document contains sufficient information to indicate it is requesting an extension of time under the remaining relevant subsection 59(1). Therefore I am satisfied the purpose of the document filed on 28 September 1992 is to request an extension of time to file a notice of opposition to application no.626359 under subsection 59(1) of the Patents Act 1952.

EFFECT OF 1990 ACT

If STOKES files a notice of opposition the opposition procedures used would be those set out in chapter 5 of the Patent Regulations.  The Kent-Moore decision (supra) and the Diamond Scientific decision (Diamond Scientific Company v CSL Ltd (1992) AIPC 90-927) describe the opposition environment under the Patents Act 1990. These decisions emphasise the effect of the statement of grounds and particulars on this environment. I will discuss this environment at relevant places in the decision.

DECISION

EMAIL has pointed out there is no statement which supports STOKES locus standii to oppose application no.626359.  The issue of locus standii could be raised during consideration of an extension of time under subsection 59(1) of the Patents Act 1952 (see for example Ulrich Labels Pty Ltd v PATEFA 20 IPR 410). This issue could be raised at that stage in the proceedings because section 163 stated it could be raised as a preliminary issue.

STOKES may request an extension of time under subsection 59(1) of the Patents Act 1952 because this subsection was not repealed by the Patents Act 1990. But section 163 of the Patents Act 1952 was repealed by the Patents Act 1990. And there is no section in the 1990 Act which corresponds to section 163. Therefore there is no statutory basis for EMAIL to raise the issue of locus standii as a preliminary matter.

A request for an extension of time under subsection 59(1) occurs at an early stage in the proceedings. At a later stage in the proceedings an opposition may only be dismissed under regulation 5.5 where it is clear from the evidence already on file the opponent has no chance of establishing locus standii (Bethlehem Steel Corporation v Bagale Pty Ltd AIPC (1992) 90-906 at page38,570).  Therefore I am satisfied STOKES' failure to state its locus standii before it has even filed a notice of opposition is not relevant.

In any case I note STOKES is named as a manufacturer and seller of water heater elements in HERMETIC's statement of grounds and particulars.

The law concerning extensions of time to lodge a notice of opposition is based on the judgement of the Federal Court in the cases of Vangedal-Nielsen v Smith (33 ALR 144), Lyons v Registrar of Trade Marks (50 ALR 496) and Kimberly- Clark Ltd v Commissioner of Patents (13 IPR 551). These judgements establish that:

1.The Commissioner, before allowing the extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension; and

2.The Commissioner must consider not only the private interests of applicants for patents, and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.

I think STOKES' first submission suggests it is entitled to an extension of time unless EMAIL can show why it is not entitled to an extension of time.  I think it follows from the judgement in the Vangedal-Nielsen case (supra) that the onus is on STOKES' to justify the extension.

According to Jenkinson, J it is sufficient for STOKES to show it has under bona fide consideration a ground of opposition which is serious(Kimberly-Clark case, supra at page 565).

I note STOKES is a manufacturer in a similar area of technology to the subject matter of application no.626359.  The extension of time application refers to a valid objection to the claims.  And STOKES' written submissions state claim 1 is "inherently invalid on the face of the claim".  Both the application and the submissions refer to STOKES conducting prior art searches.  The submissions also refer to enquiries to determine common general knowledge in the art.  This suggests to me STOKES is investigating serious grounds of opposition.

EMAIL asserts STOKES is seeking the extension of time for the purpose of a "fishing expedition".  It seems to me the opposition environment discussed in the Kent Moore and Diamond Scientific decisions (supra) means a potential opponent has to thoroughly investigate whether there are any grounds and particulars before deciding to file its notice of opposition.  I think this investigation may sometimes resemble a "fishing expedition" to a patent applicant which is aware of the most relevant prior art documents and gaskets.  But I do not think I can agree with EMAIL's assertion without some evidence to support it.

A statement in STOKES' submissions reads as follows:

"the applicant for the extension of time is genuinely interested in determining whether or not they should oppose the present application"

I think this statement would have more weight if it was in a statutory declaration made by a person able to declare to this interest.  But I can give this statements some weight (Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 665 at page 689). I note STOKES states in a letter filed on 24 November 1992 some of the prior art searches have been completed. The letter also states copies of prior art references which it believes anticipate claim 1 have been sent to EMAIL's attorneys. This letter does not state what these references are. This suggests to me STOKES is conducting a bona fide investigation of grounds of opposition.

I conclude from all of the above STOKES has serious grounds of opposition against application no.626359 under bona fide consideration.

According to the application for extension of time STOKES has only recently received a considered opinion concerning the scope of the claims from its attorneys.  STOKES submissions do not explain when it asked for this opinion and why it received this opinion approximately 2 months after the advertisement of acceptance of the present application.  Nor do the submissions explain what formed the basis of this opinion.  For example, to what extent the prior art documents were searched.

STOKES' application seeks more time to conduct suitable searches.  And I note from the letter filed on 24 November 1992 STOKES has completed some prior art searches.  I also note documents filed with EMAIL's submissions suggest two companies can provide prior art searches in less than two months.  But the submissions made by STOKES state as follows:

"...the opponent first wishes to conduct suitable searches and make other enquiries to determine the availability of evidence to support the available grounds of opposition, particularly on the question of the common general knowledge in the art and the availability of articles having the same configuration as is claimed in claim 1 and which would perform an insulating function"

Therefore I presume the word "searches" in the application for extension of time includes a search for both relevant documents and gaskets.  This quotation suggests to me STOKES is not restricting its search to gaskets for a water heater element assembly.

STOKES explains it was experiencing difficulty searching the patent literature and locating suitable prior art because the "invention is extremely basic and simple in nature".  EMAIL argues this is self contradictory because it should be relatively easy to obtain instances of anticipation if the invention is basic and simple in nature.  In my view this argument is not relevant because the amount of effort required to find an anticipation is not necessarily related to the nature of the item sought.

I note claim 1 of application no.626359 is in the form "..a gasket for a water heater element assembly..".  I think it is reasonable for a potential opponent, which is considering whether to oppose such a claim, to search a wider area of technology than gaskets for water heater element assemblies.  But it seems to me STOKES as a manufacturer of water heater elements should have a good knowledge of this area of technology.  Thus I cannot understand why it took STOKES until approximately 1 month after the notice of opposition was due to be filed to give EMAIL copies of some prior art references.

The submissions filed by STOKES refer to the need to determine the common general knowledge in the art. This involves contacting numerous persons for information. I think the combined effects of the broader area of technology STOKES wishes to search. And the opposition environment under the 1990 Act may mean the investigation and consideration of the relevant common general knowledge by a potential opponent takes longer than the 3 month period allowed by subsection 59(1). But I consider STOKES has not explained what efforts it has already made to determine the common general knowledge. I also consider it has also not explained why it thinks these efforts are incomplete.

In summary I consider STOKES has not given sufficient justification for why it needs more time.  Rather it has explained what it will do if it is allowed more time.

STOKES' interests are best served if I allow the extension of time and let it decide whether to file a notice of opposition.  EMAIL's interests are best served by refusing the extension of time.

In EMAIL's opinion implicit in STOKES' submissions is an attempt to extend the time for filing the statement of grounds and particulars or the evidence in support. In my view this opinion is only relevant if it is clear STOKES is using subsection 59(1) to delay filing a notice of opposition it has already decided to file. I consider there is no such evidence on file. I also consider the fact that granting the extension of time may also extend the time when the statement of grounds and particulars and the evidence in support are due is not a relevant consideration. In my view the legislature must be presumed to have taken account of this fact when it did not repeal subsection 59(1) (Kimberly-Clark case, supra at page 563).

STOKES has not provided me with any evidence that a patent granted on application no.626359 would be invalid.  But it asserts the invention claimed in claim 1 is "inherently invalid on the face of the claim".  STOKES did not explain the basis for this assertion.

In my opinion claim 1 claims in broad terms a piece of electrically insulating material of a particular shape which is capable of being used as a gasket for a water heater element assembly.  It seems to me it may be in the public interest to allow STOKES an extension of time if I consider claim 1 may make a patent granted on the present application invalid.  But I consider the commissioner will not allow a patent to be granted on the present application if claim 1 is inherently invalid on the face of the claim.  Because any such claim will necessarily be considered during HERMETIC's opposition or during a "bar to sealing" if HERMETIC withdraws its opposition (Applications by Gould 13 IPR 644).

Therefore I do not have to allow STOKES an extension of time to satisfy the public interest in ensuring that any patent granted on application no.626359 is not invalid.  In this case I do not consider it is in the public interest to extend the time to a party which has not justified why it needs more time.

Office practice set out in recent decisions involving extensions of time has been to consider the public interest for a particular opposition independently of any other opposition (see for example ICI Australia Operations Pty Ltd v commercial Polymers Pty Ltd (1992) AIPC 90-877 at page 38,323 and ICI Australia Operations Pty Ltd v Dowlenco (1992) AIPC 90-884 at page 38,367). But in the situations described in these decisions the opponent did not assert a claim was inherently invalid on its face. In my view this assertion justifies me taking HERMETIC's opposition into account in the present situation.

CONCLUSION

In summary I have found STOKES:

-has serious grounds of opposition under bona fide consideration,
-has not justified why it needs an extension of time, and
-has not convinced me it is in the public interest to extend the time.

Consequently I refuse to allow STOKES an extension of time to 30 January 1993 in which to file a notice of opposition to application no.626359 under subsection 59(1) of the Patents Act 1952.

M. KENDALL
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Halford & Co, Sydney

Patent attorneys for the opponent   :  Carter Smith and Beadle, Melbourne